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In This Issue

Caterpillar Inc. v. Ron Feimer

New Ratings Formulas Introduced To Measure Internet Audiences

ICANN’s Challenge to Replace Vint Cerf

International Companies Brace For October 9 “.asia” Deadline

Recent Decisions

American Airlines, Inc. v. Damir Kruzicevic

Complainant, American Airlines, Inc., filed a UDRP complaint against Respondent, Damir Kruzicevic, for the <aatravel.com> domain name. Respondent contended that Complainant did not have exclusive rights in Complainant’s federally registered AA mark since the letters are widely used by others in connection with travel. Additionally, Respondent argued that it was using the <aatravel.com> domain name to redirect Internet users to a legitimate travel website from which it sold airline tickets. Complainant alleged that the competing nature of this website indicated that Respondent lacked rights and legitimate interests in the disputed domain name and that Respondent was using the name in bad faith. The three-member Panel found that Complainant’s registration and longstanding use of the AA mark established its rights in the mark and that the <aatravel.com> domain name was confusingly similar to Complainant’s AA mark pursuant to Policy ¶ 4(a)(i). The Panel also found that Respondent lacked rights or legitimate interests in the <aatravel.com> domain name under Policy ¶ 4(a)(ii) because Respondent’s unauthorized use of the domain name to sell airline tickets was not a bona fide offering of goods or services. Finally, the Panel found that Respondent registered and was using the disputed domain name in bad faith, pursuant to Policy ¶ 4(a)(iii), because it capitalized on the likelihood that Internet users would be confused as to Complainant’s affiliation with or endorsement of the domain name. Accordingly, the Panel transferred the <aatravel.com> domain name from Respondent to Complainant. Am. Airlines, Inc. v. Kruzicevic, FA 1015779 (Nat. Arb. Forum July 30, 2007).

Caterpillar Inc. v. Ron Feimer

Complainant, Caterpillar Inc., citing rights in the CAT mark, brought a claim against Respondent, Ron Feimer, for the <aftermarketcat.com> domain name. Respondent used the disputed domain name to resolve to a website retailing aftermarket machine parts, which were compatible with Complainant’s CAT products. As explained by the Panel, the core issue was whether a seller of spare parts could establish rights or legitimate interests in a domain name that incorporated a manufacturer’s mark under Policy ¶ 4(a)(ii). The Panel found the matter of Experian Info. Solutions Inc. v. Credit Research Inc., D2002-0095 (WIPO May 7, 2002) instructive as to the requirements in which a party may register a domain name incorporating another’s mark. The Panel in that case outlined a four-part test for permissive use of a mark by an authorized sales or service agent. “[First,] Respondent must actually be offering the goods or services at issue . . . . [Second,] 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 . . . . [Third, t]he site must accurately disclose the registrant’s relationship with the trademark owner; it may not . . . falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents . . . . [Fourth,] Respondent may not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in the domain name.” The Panel concluded that because Respondent’s product offerings were not solely restricted to the resale of Complainant’s goods, Respondent was using the <aftermarketcat.com> domain name to sell competing goods and, therefore, did not establish rights or legitimate interests in the disputed domain name sufficient to satisfy Policy ¶ 4(a)(ii). As a result, the Panel ordered the transfer of the <aftermarketcat.com> domain name to Complainant. Caterpillar Inc. v. Feimer, FA 1008998 (Nat. Arb. Forum July 28, 2007).

Eden Stone Co., Inc. v. Edenstone

Complainant, Eden Stone Co., Inc., filed a UDRP claim against Respondent, Edenstone, contesting Respondent’s registration of the <edenstone.com> domain name. Complainant asserted rights in the EDEN mark, in connection with goods and services relating to stone, through two registrations with the United States Patent and Trademark Office. In response, Respondent challenged Complainant’s rights, asserting Complainant had only registered the EDEN mark and not EDEN STONE. Respondent claimed “Edenstone ‘is a business and trade name representing artist and sculptor Peter Eissfeldt.’” Respondent also pointed out that the <edenstone.com> domain name was registered in 1999, two years prior to the earliest acceptance of Complainant’s trademark applications. Finding Complainant failed to provide the Panel with sufficient evidence to support Complainant’s assertion that it had been using the words “Eden Stone” in commerce since 1952, and thus finding Complainant had not established common law rights that predated the registration of the disputed domain name, the Panel denied Complainant’s request to transfer the <edenstone.com> domain name. Eden Stone Co. v. Edenstone, FA 992132 (Nat. Arb. Forum July 6, 2007).

Fum Machineworks Inc. v. Tomov c/o Plamen Tomov

Complainant, Fum Machineworks Inc., brought a usDRP complaint against Respondent, Tomov c/o Plamen Tomov, for the <recipezaar.us> domain name. Complainant alleged that Respondent was using the disputed domain name to offer online recipe and cooking services in competition with Complainant. Respondent contended that it had a pending trademark application in Bulgaria for “Recipe Zaar” and that it intended to offer services in the United States. The Panel found that the <recipezaar.us> domain name was confusingly similar to Complainant’s federally registered RECIPEZAAR mark under Policy ¶ 4(a)(i). The Panel also found that Respondent’s pending Bulgarian trademark application, of which Respondent provided no proof, and its assertion that it intended to offer services in the U.S. were insufficient to establish Respondent’s rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Finally, the Panel found that Respondent registered and was using the <recipezaar.us> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent was using the confusingly similar domain name in competition with Complainant and because Respondent offered to sell the registration to Complainant. Accordingly, the Panel ordered that the <recipezaar.us> domain name be transferred from Respondent to Complainant. Fum Machineworks Inc. v. Tomov, FA 997925 (Nat. Arb. Forum July 19, 2007).

The Vanguard Group Inc. v. Addressor.com c/o Domain Registration

Complainant, The Vanguard Group Inc., brought a UDRP claim against Respondent, Addressor.com c/o Domain Registration, for registration and use of the <vanguarde.com> domain name. Complainant alleged the disputed domain name and Complainant’s VANGUARD mark were confusingly similar. Respondent argued that Complainant had no presence in Respondent’s home country of Brazil and “that the term ‘vanguarde’ conforms to the linguistic appearance” of a word in Portuguese. The Panel found that the record contained uncontested evidence demonstrating Respondent’s use of the domain name in question to resolve to a page of hyperlinks, some of which were in direct competition with Complainant, and at the time of the proceeding, Respondent’s <vanguarde.com> domain name did not resolve to an active website. Having determined Complainant satisfied all of the elements of Policy ¶ 4(a), the Panel ordered transfer of the <vanguarde.com> domain name. Vanguard Group Inc. v. Adressor.com, FA 982733 (Nat. Arb. Forum June 25, 2007).

Washington CeaseFire v. Private Registration

Complainant, Washington CeaseFire, brought a claim against Respondent, Private Registration, for the <washingtonceasefire.com> domain name. Both parties were lobbyists in the area of gun control. Respondent contended that Complainant had no rights in the WASHINGTON CEASEFIRE mark because (1) Complainant had not established it as a service mark; (2) Complainant had operated under many different names; and (3) Complainant worked to encourage passage of laws that advanced bigotry and the loss of civil rights. The Panel found that Complainant had established common law rights in the WASHINGTON CEASEFIRE mark through continuous and extensive use of the mark since 1983. Therefore, the Panel held that Complainant satisfied Policy ¶ 4(a)(i) because the <washingtonceasefire.com> domain name was identical to the WASHINGTON CEASEFIRE mark. The Panel also found that Respondent lacked rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii) because Respondent was not commonly known by the <washingtonceasefire.com> domain name and Respondent’s use of the mark to operate a complaint website against Complainant was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Finally, the Panel found that Respondent registered and was using the <washingtonceasefire.com> domain name in bad faith because it admitted knowledge of Complainant’s mark and was using Complainant’s mark in its entirety to operate a complaint website. Thus, the Panel transferred the <washingtonceasefire.com> domain name to Complainant. Washington CeaseFire v. Private Registration, FA 985159 (Nat. Arb. Forum June 27, 2007).

E-PRACTICE

New Ratings Formulas Introduced To Measure Internet Audiences

Nielsen//NetRatings, an Internet media and market research company, issued a press release on July 10, 2007 indicating that it would be changing the way in which it measures Internet audiences. The press release announced that its NetView ratings system will now measure “total minutes” and “total sessions” on a website as opposed to average time per person and average number of views of a page. Nielsen//NetRatings believes this change is necessary in order to account for the increasing uses of AJAX (Asynchronous Javascript And XML) technology that delivers photos, online maps, e-mail, and other services and content without having to go to another webpage.

Another Internet research company, comScore, Inc., issued its own press release on July 26, 2007 also announcing its new measurements for Internet audiences. The press release indicated that comScore’s new Segment Matrix, which will be incorporated into its existing Media Matrix, will divide the current criteria and include “total minutes” in some of the measurement formulas. However, comScore President and Chief Executive Magid Abraham stated that total number of page views and other older measures will still be utilized along with the newer ones.

Both Nielsen//NetRatings and comScore’s new ratings systems are intended to better take into account the increasing amount of time Internet users spend on websites while watching videos on YouTube or messaging through AOL, for example. The new ratings systems are similar to how TV ratings are measured, which substantiate time spent on a channel as opposed to measuring the number of visits to each channel while flipping through them.

Mark Simon, vice president of industry relations at Did-it, an agency for search engine marketing and auctioned media management, believes that this change will not have a huge effect on businesses because, while branding is important, the personalization of products attracts consumers. Others disagree. According to Scott Karp, editor and publisher of media blog Publishing 2.0, measuring time spent “is problematic because it assumes that more time spent is a measure of a Web site's success.” Additionally, a recent Forbes article found that the change in measurements drew a mixed response from online advertising experts who noted that many websites do not use AJAX technology.

Sheryl Draizen, senior vice president of Interactive Advertising Bureau, an association which assists online media companies, stated that the new measurements are not definitive and that other methods should still be explored. Even Scott Ross, director of product marketing at Nielsen//NetRatings, indicated that time spent may not be the prevailing measure for long since the industry has not agreed on a standard measure. Ultimately, all parties acknowledge that the ratings formulas will continue to adapt as long as Internet capabilities continue to change and evolve.

In The News

Fox News Reports on Record Domain Name Industry Growth

Fox News, July 24, 2007: According to a report by Fox News, the domain name industry is booming with a growth it has not experienced since 1999. The domain name industry is currently valued at $2 billion with 90,000 domain names being purchased per day. To date, there is one domain name registered to every two Americans. Growth is expected to continue as sales are projected to double in the next few years alone. The biggest “real estate” area is still in “.com” top-level domains, which include such groundbreaking sales as the $12 million <sex.com> domain name purchase and the $3 million purchase of the <creditcheck.com> domain name. Link to Full Fox News Video Report on YouTube

ICANN’s Challenge to Replace Vint Cerf

PC World, July 1, 2007: In October of this year, Vint Cerf, ICANN’s Chairman, steps down and the controversial organization will have the challenge of replacing their longtime board member. Cerf’s collaboration, patience, and political skill have made him instrumental to the organization’s success over his past eight years on the board. One of the greatest assets Cerf brought to ICANN was his reputation as that of an Internet legend. He has been credited as a founding father of the Internet, having created the basic architecture on which it is built. Cerf’s critics note his conservative approach and lack of corporate management skills as his biggest shortcomings. Further, Cerf’s successor will be left with the unresolved issues from his leadership, including ICANN’s long-anticipated, full independence from the U.S. government, as well as the ongoing technical and policy issues facing the organization. Along with the many skills Cerf’s successor will be required to possess, the successor must also be willing to work pro bono. Cerf also plans to distance himself from the organization for at least one year to allow his successor to develop their own leadership style without being encumbered by the shadow of the Internet luminary. This will also allow Cerf to focus on what he calls his “day job” as Google’s Chief Internet Evangelist. ICANN’s board now must face the unenviable challenge to find a leader that will take the organization into the future. Link to Full Story

CADNA Officially Launches Its Anti-Cybersquatting Campaign

CADNA.org, July 24, 2007: In response to the domain name sales boom and a reported 248% increase in cybersquatting over the past year, the Coalition Against Domain Name Abuse (CADNA) announced its official launch of a campaign to combat cybersquatting. Cybersquatters have found a new way around the 1999 Anti-Cybersquatting Consumer Protection Act (ACPA) by employing “tasting” or “kiting” to test a domain name’s profitability before returning it to the registrar after a free five-day trial period. Further, according to industry reports, $600 billion was spent in online counterfeits last year and U.S. consumers lost more than $198.44 million to phishing schemes. CADNA plans to work with government agencies as well as ICANN and WIPO to “make these fraudulent practices difficult to establish and unprofitable to maintain.” Link to Full Story

GoDaddy.com, Inc. and Afilias USA, Inc. Join Forces to Try to Assume usTLD Registry

Domain Name Alliance Registry, July 31, 2007: GoDaddy.com, Inc. and Afilias USA, Inc. announced that they have joined forces to develop the Domain Name Alliance Registry (“DNAR”). This new venture will enable these companies to answer the U.S. Department of Commerce’s National Telecommunications and Information Administration (“NTIA”) call for bids to assume the role as registry operator for the usTLD. DNAR contends that the usTLD has underperformed for the last six years, currently ranking 9^th in the world’s country code domains. If selected, the DNAR intends to turn around the usTLD and get it on track with the massive growth in the industry. DNAR’s bid contains several key items for ensuring success, including reduced pricing, increased marketing to stimulate growth, and stronger stability and security. Further, if selected, GoDaddy.com and Afilias argue that their combined experience will facilitate a smooth transition when the current provider steps down in October. NTIA should appoint a new provider no later than September. Link to Full Story

International Companies Brace For October 9 “.asia” Deadline

Times Online, July 4, 2007: Businesses are being warned that cyber-speculators and counterfeiters are preparing to hijack domain names with the upcoming release of the “.asia” top-level domain. Hoping to avoid the “free-for-all” that developed after the release of the “.eu” top-level domain last year, the “.asia” top-level domain registrations will be issued in three stages. First, beginning on October 9, both companies with registered trademarks and governments will be able to register their domain names. Then, beginning on November 13, companies that have already registered their domain names will be given the opportunity to register more domains that relate “specifically to their line of business.” Companies with an established presence in Asia will also be able to register domain names during this second phase, even if the names are not trademarked. Finally, domain names with the “.asia” top-level domain will be open to the public for registration in the third stage scheduled for February of 2008. Link to Full Story

New Scam Uses WHOIS Database to Target Domain Name Holders

TechWorld, July 17, 2007: An organization calling itself “Domain Renewal” is representing itself as a third-party registration renewal service for domain name holders. However, under the current domain-name registry framework, third-party renewals are “impossible.” “Domain Renewal” targets its victims through direct e-mails sent to domain name holders. The company creates its list of contacts from the public information available for domain name holders via the WHOIS database. Internet users are able to pay for “Domain Renewal” services with a credit card on its professional looking website. As many domain holders register their domains with several different Registrars, it is often difficult for them to recognize fraudulent organizations. In the meantime, industry experts discourage following e-commerce links sent in e-mails as this is a common way to perpetrate financial fraud. Link to Full Story

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Note: The information found in this newsletter is designed to provide accurate and authoritative information regarding the subject covered, but is not intended as legal advice.