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Your Source for Domain Dispute
News and Information |
October 17, 2007,
Vol. 8 No. 10 |
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In
This Issue
JES Publishing Corp. v. Brand Wellard
What’s In Your Neighborhood? “.city” Domains Could Provide the Answers
ICA Announces New 8-Point Code of Conduct for Members
.Name Registration Information Available in Tiered Access, For a Fee
Recent
Decisions
Global Affiliates,
Inc. v. Texas International Property Associates
Complainant, Global Affiliates, Inc., brought a UDRP
complaint against Respondent, Texas International Property Associates, for
the <globafit.com> domain name. Complainant alleged that Respondent
was using the disputed domain name as “a portal website which offers
competing goods.” Respondent contended that it was in the business of
providing locater services for Internet users seeking to locate providers of
goods and services through references of common, well-known generic and
descriptive terms. The Panel found that the <globafit.com> domain
name was confusingly similar to Complainant’s GLOBALFIT common law mark
pursuant to Policy ¶ 4(a)(i). The Panel also found that despite any good
faith alleged by Respondent, since Respondent did not rebut the claim that
the disputed domain name offered links to competing websites, Respondent’s
business could not have any rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii) and could only have registered and
used the <globafit.com> domain name in bad faith pursuant to Policy ¶
4(a)(iii). Accordingly, the Panel transferred the <globafit.com>
domain name to Complainant.
Global Affiliates, Inc. v. Tex. Int’l Prop. Assocs., FA 1053370
(Nat. Arb. Forum Sept. 26, 2007).
Minicards Vennotschap
Onder Firma Amsterdam v. Moscow Studios c/o Tamer Malekames
Complainant, Minicards Vennotschap Onder Firma
Amsterdam, brought a claim against Respondent, Moscow Studies c/o Tamer
Malekames, for the <minicardsusa.com> domain name. Complainant
alleged that it was the worldwide owner of the MINICARDS mark in connection
with advertising and marketing services as evidenced by its trademark
registrations with the European Union, Denmark, and Russia. Complainant
asserted that these rights were being infringed upon by Respondent’s
disputed domain name. Respondent, a former licensee of Complainant, alleged
that Complainant has never conducted any business in the United States and
has no rights to the MINICARDS mark in the United States. Moreover, in
support of its claims, Respondent stated that it had a pending application
for the mark with the United States Patent and Trademark Office (“USPTO”).
However, the Panel found that Respondent’s <minicardsusa.com> domain
name was confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i). Also, the Panel held that a complainant need not be conducting
business in a particular country where a respondent resides in order to have
rights in a mark under Policy ¶ 4(a)(i). The Panel then concluded that
Respondent did not have rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii) because Respondent as a former
licensee should have been aware that it did not have permission to use
Complainant’s mark in the disputed domain name. Lastly, the Panel found that
Respondent registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(a)(iii) because the disputed domain name marketed
goods and services in direct competition with those offered by Complainant
under the MINICARDS mark. The Panel thus ordered the transfer of the <minicardsusa.com>
domain name to Complainant.
Minicards Vennotschap Onder Firma Amsterdam v. Moscow Studios, FA
1031703 (Nat. Arb. Forum Sept. 5, 2007).
The Napoleon Hill
Foundation v. Dan Klatt
Complainant, The Napoleon Hill Foundation, brought a
claim against Respondent, Dan Klatt, for the <rediscoverthinkandgrowrich.com>
domain name. Complainant held a federal trademark registration for the THINK
AND GROW RICH mark in connection with self-development, self-improvement
education programs, materials and software. Respondent argued that it had
based its disputed domain name on its product that it marketed under
“Rediscover Think and Grow Rich,” a derivative work of the book originally
marketed by Complainant under the THINK AND GROW RICH mark. Respondent
further stated that it makes clear on the website that resolves from the
disputed domain name that its websites are based on the original book
distributed under the THINK AND GROW RICH mark. The Panel found the disputed
domain name was confusingly similar to Complainant’s mark pursuant to Policy
¶ 4(a)(i). The Panel also held that, while Respondent may be authorized to
sell and work with an adaptation of Complainant’s original book under
relevant copyright law, under the trademark law at issue in this proceeding,
Respondent was not allowed to incorporate Complainant’s mark in <rediscoverthinkandgrowrich.com>
domain name and thus had no rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii). Finally, the Panel concluded that
Respondent registered and was using the disputed domain name in bad faith
pursuant to Policy ¶ 4(a)(iii) because Respondent’s disclaimer did not
mitigate the confusingly similar aspects of the disputed domain name to
Complainant’s THINK AND GROW RICH mark. As such, the Panel transferred the
<rediscoverthinkandgrowrich.com> domain name to Complainant.
Napoleon Hill Found. v. Klatt, FA 1045245 (Nat. Arb. Forum Sept. 14,
2007).
JES
Publishing Corp. v. Brand Wellard
Complainant, JES Publishing Corp., brought a claim
against Respondent, Brand Wellard, for the <utahbrideandgroom.com>
domain name. Complainant contended that it had been using the UTAH BRIDE &
GROOM mark since 1997 in connection with a wedding magazine and that
Respondent was using the disputed domain name to display a wedding planning
website that competed with Complainant’s business. Respondent asserted that
the term “Utah Bride and Groom” was not distinctive to Complainant, and that
it purchased the <utahbrideandgroom.com> domain name to develop a
legitimate wedding planning website different from Complainant’s business.
The Panel held that Complainant had established common law rights in the
UTAH BRIDE & GROOM mark by virtue of its extensive use and development of
the mark and that the <utahbrideandgroom.com> domain name was
identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). Next, the
Panel concluded that Respondent lacked rights and legitimate interests in
the disputed domain name under Policy ¶ 4(a)(ii) because the competing
wedding website did not constitute a bona fide offering of goods or
services or a legitimate noncommercial or fair use of the disputed domain
name. Lastly, the Panel found that Respondent registered and was using the
<utahbrideandgroom.com> domain name in bad faith pursuant to Policy ¶
4(b)(iv) because Respondent was intentionally attracting Complainant’s
potential customers to Respondent’s own website for commercial gain by
creating a likelihood that customers would be confused as to Complainant’s
affiliation with the website. Therefore, the Panel transferred the <utahbrideandgroom.com>
domain name from Respondent to Complainant.
JES Publ’g Corp. v. Wellard, FA 1036201 (Nat. Arb. Forum Sept. 11,
2007).
Iberostar
International A.G. v. Leisure Travel Inc. c/o Kellie Davis
Complainant, Iberostar International A.G., brought a
UDRP complaint against Respondent, Leisure Travel Inc. c/o Kellie Davis, for
the <goiberostar.com> domain name. Respondent admitted to the
confusing similarity between the <goiberostar.com> domain name and
the IBEROSTAR mark, but it contended that its rights and interests in the
disputed domain name arose out of a personal relationship with an officer of
Complainant and that it had permission to use the IBEROSTAR mark to market
Complainant’s vacations. The Panel found that the disputed domain name was
confusingly similar to Complainant’s IBEROSTAR mark pursuant to Policy ¶
4(a)(i). The Panel also held that Respondent did not have rights or
legitimate interests in the <goiberostar.com> domain name because
Respondent was not known by the disputed domain name and because Complainant
had not given up the right to control its IBEROSTAR mark even if Respondent
was authorized to promote Complainant’s vacations. However, the Panel
concluded that Respondent’s registration and use of the disputed domain name
was not in bad faith because Respondent believed that an officer of
Complainant legitimately endorsed its use of the IBEROSTAR mark and because
Respondent was operating a website for the mutual benefit of itself and
Complainant. Therefore, the Panel denied Complainant’s request for the
transfer of the <goiberostar.com> domain name.
Iberostar Int’l A.G. v. Leisure Travel Inc., FA 1045076 (Nat. Arb.
Forum Sept. 24, 2007).
E-PRACTICE
What’s In Your Neighborhood? “.city” Domains Could Provide the Answers
Within the past few months, a growing number of
individuals, businesses, and organizations have lobbied the Internet
Corporation for Assigned Names and Numbers (“ICANN”) to develop and release
“.city” top-level domains (“TLDs”). Berlin, New York City, Paris, London,
and Buenos Aires are the primary cities seeking these new TLDs in order to
publicize information about their municipalities.
Many of the lobbying efforts have been driven by
Dirk Krischenowski, founder and
CEO of
dotBERLIN. Krischenowski
contends that
“.city” TLDs could provide helpful advertising and informational pages
for citizens, local businesses, and local governments, as well as tourists,
that current “City.com” domains do not contain. For example, Krischenowski
argues that <traffic.nyc> is intuitively easy to remember, which could
therefore facilitate better communication with local authorities. In
essence, “.city” TLDs would serve the functions of current country-code TLDs,
such as “.us” or “.eu,” but on a
local level.
New York City
is attempting to become the first American city to create its own TLD.
Advocates believe that a “.nyc” TLD
could provide many advantages, including online economic development,
greater civic pride, better marketing opportunities for tourism, and an
increased potential for networking. In April 2001, the Queens Community
Board passed a
resolution advocating for the “.nyc” TLD, stating that it would “make
our community more governable, provide opportunities for small businesses,
raise city revenue, and make navigating the Internet easier for our
residents, prospective tourists, and businesses.” Despite the movement’s
growing support,
efforts were stalled when the city’s focus changed after the events of
September 11, 2001. Currently, however,
the “Campaign for .nyc” is
allocating certain domain names to serve certain functions, including <directory.nyc>,
<help.nyc>, <police.nyc>, <hotels.nyc>, <bronx.nyc>, and many others with
hopes that ICANN will approve the “.nyc” TLD in 2008.
However, some
initiatives to obtain a “.city” domain name have been met by opposition from
their own government. For example, the “.berlin” movement has been faced
with resistance from the Berlin government. The
Berlin government claims that intellectual property rights to the name
“Berlin” belong to the city, so only the city itself should be allowed to
register any “.berlin” domain names. The government further claims that
“.berlin” domain names would compete with its existing <berlin.de> domain
name and the two could be considered confusingly similar under the Uniform
Dispute Resolution Policy (“UDRP”). This dispute could significantly impact
other campaigns to obtain “.city” TLDs.
Other
intellectual property issues may also arise. For example, both Kansas City,
Kansas and Kansas City, Missouri would presumably seek the “.kc” TLD. With
each having legitimate interests, questions of priority may result. However,
Craig Schwartz, ICANN’s Chief gTLD Registry Liaison, encourages individuals
and businesses interested in obtaining a “.city” TLD for their city to
rally local support and encourage their governments to submit proposals.
Depending on what ICANN decides in early 2008, “.nyc” and “.berlin” may set
the trend for establishing new local domains that could be beneficial to
cities worldwide.
In
The News
ICA Announces New 8-Point
Code of Conduct for Members
Internet Commerce Association,
September 13, 2007: The Internet Commerce Association (“ICA”) announced an
eight-point code of conduct for its members in hopes of fostering and
promoting “fair and ethical business practices in the domain industry.” The
new guidelines specifically address intellectual property rights protection,
Internet fraud laws, transparency of ownership, lawful content, tasting and
kiting, as well as adhering to ICANN’s rules regarding registering and
deleting domain names. Although the ICA believes that existing laws have
successfully addressed consumer protection and protection of intellectual
property rights in cases of fraud or illegal intent, the organization
maintains that the domain name industry can manage the other issues that
existing laws do not currently address. ICA urges that market-driven
solutions, such as the eight-point code, are the first step in appropriately
resolving current domain name industry problems such as tasting,
cybersquatting and phishing.
Link to Full Story
Domain Name Registration Constitutes 10% of
the GDP of Tokelau
BBC News, September 14, 2007:
The tiny South Pacific island of Tokelau may only have 1,500 inhabitants,
but the island managed to add 10% to its GDP by selling its country code
top-level domain (“ccTLD’) “.tk” to a Dutch investor. Juust Zuurbier, the
Dutch investor, petitioned ICANN for four years to facilitate the sale.
Apparently ICANN did not believe the island really existed and only agreed
to the deal after a Board member admitted to having visited the country in
1978. Currently there are 1.6 million “.tk” domain name registrations with
10,000 more being added daily. The deal has added to Tokelau’s ability to
communicate with the outside world through the use of voice-over-IP
technology and satellite broadband services, encouraging an increase in the
number of computers on the island from just twelve to two hundred.
Emigration has also been a major problem on the island with over 8,000
islanders living abroad, mostly in New Zealand. However, following this
deal, the island developed a website that allows those islanders living
abroad to access local news and information about their native homeland. Link
to Full Story
Russian Internet Users Fight to Save Old
USSR’s “.su”
Reuters, September 19, 2007:
ICANN is hoping to ditch the old ccTLD “.su” which was assigned to the
former Soviet Union just before its collapse nearly 16 years ago. However,
thousands of Internet users are fighting to save the nostalgic “.su” ccTLD.
There are currently about 10,000 “.su” domain names registered with about
1,500 being added this year. Independent lobbyists are currently negotiating
with ICANN to keep the outdated “.su” ccTLD operating even though it was
removed from the ISO 3166-1 list in 1992. Lobbyists compare the “.su” ccTLD
to Great Britain’s “.uk,” an example of a ccTLD remaining in operation
despite being removed from the list. Lobbyists also stress that the issue
will not rise to the level of an “Internet Cold War” as negotiations have
remained friendly.
Link to Full Story
.Name Registration
Information Available in Tiered Access, for a Fee
Wired, September 28, 2007:
Global Name Registry (“GNR”), the company who controls the generic top-level
domain (“gTLD”) “.name,” has begun charging for access to its domain name
registration information. As a result, GNR’s policy is frustrating Internet
policing efforts. Normally, registrars are required by ICANN to keep domain
name registration information public. However, GNR is an exception and is
permitted to offer “tiered levels of Whois access, where public searches
show very little information beyond what registrar sold the name and what
name servers the site uses.” GNR charges a $2.00 fee for passwords that
allow 24-hour access to the registration information. Internet security
experts argue this is too much to pay to verify domains suspected of illegal
activity. Industry experts report that registrants are hiding behind “.name”
domain names and spreading malware. GNR is allowed to keep its registration
information private pursuant to its contract with ICANN so that it can
comply with British privacy laws.
Link to Full Story
Basketball Bobcats Bag Domain Name From Bobcat
Breeder
ESPN.com September 18, 2007. The
Charlotte Bobcats basketball team has finally obtained rights to the <bobcats.com>
domain name after three years of negotiations with the owner of a bobcat
breeding farm who initially registered the domain name. Bobcats’ President
Fred Whitfield indicated that the purchase was part of a broader movement by
the organization to improve its marketability. However, the team was forced
to raise its offer to around $50,000 in order to obtain the rights to the
<bobcats.com> domain name from the initial registrant.
Link to Full Story
Nigerian Internet Domain Name Registrations
Growing
allAfrica.com,
September 21, 2007: The country-code top-level domain (“ccTLD”) “.ng” has
seen over 3,000 registrations since its inception six months ago. Ndukwe
Kalu, the chairperson of the Nigerian Internet Registration Association (“NiRA”),
said that this figure is expected to reach 1 million in the next 24 months.
Kalu also disclosed that the NiRA is collaborating with the directorate of
Cyber Crime and Economic and Financial Crimes Commission in order to curb
the rise of Internet fraud emanating from the Nigerian-based Internet
Protocol addresses.
Link to Full Story
Upcoming
events
|
October
18-20, 2007 |
American Intellectual Property Law Association 2007
Annual Meeting
Washington, D.C. |
|
October
29-November 2, 2007 |
Internet Corporation for Assigned Names and Numbers
(ICANN) Meeting
Los
Angeles, California |
|
November
12-15, 2007 |
Internet
Governance Forum
Rio de
Janeiro, Brazil |
Let
the National
Arbitration Forum know of
your upcoming events for listing in Domain News. Send event listing
information to:
domain-news@adrforum.com.
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