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Your Source for Domain Dispute
News and Information |
November 29, 2007,
Vol. 8 No. 11 |
Welcome to Domain News, a complimentary
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In
This Issue
Google Inc. v. David Miller
ICANN Investigates “Domain Name Front Running”
Cheap Domain Names Fueling Cybersquatting in Asia
World Wide Translations: ICANN Testing Internationalized Domain Names
Recent
Decisions
West End Events LLC v. Jerome Obinabo c/o amazuma.com
Complainant, West End Events LLC, brought a UDRP
complaint against Respondent, Jerome Obinabo c/o amazuma.com, for transfer
of the disputed <tasteofdallas.com> domain name. Since 1986,
Complainant has held an annual event, the Taste of Dallas festival, which
attracts tens of thousands of people to downtown Dallas every summer.
Respondent, a Dallas resident, registered the disputed domain name four days
after the 1999 Taste of Dallas festival. Respondent contended that it was
unaware of Complainant’s rights in the <tasteofdallas.com> domain
name and that it merely registered the disputed domain name to advertise
Dallas area restaurant and food services. The Panel first found that
Complainant’s continuous and exclusive use of the TASTE OF DALLAS mark for
the past twenty years sufficiently established Complainant’s common law
rights in the mark under Policy ¶ 4(a)(i). Respondent failed to provide
evidence of rights or legitimate interests under Policy ¶ 4(a)(ii), as the
Panel concluded that it surely had knowledge of the Taste of Dallas festival
prior to registering the disputed domain name. Finally, the Panel found that
this knowledge, along with Respondent’s use of the disputed domain name to
redirect Internet users to a commercial website that provides online
advertising services, evidenced bad faith registration and use under Policy
¶ 4(a)(iii). As a result, the Panel transferred the <tasteofdallas.com>
domain name from Respondent to Complainant.
West End Events LLC v. Jerome Obinabo c/o amazuma.com, FA1072982
(Nat. Arb. Forum Oct. 18, 2007).
Google Inc. v. David Miller
Complainant, Google Inc., brought a claim against
Respondent, David Miller, disputing Respondent’s ownership of the <youtubex.com>
domain name. YouTube, owned by Complainant, provides online video services
through a website where users can download and share original videos.
Respondent’s website at the <youtubex.com> domain name allowed
Internet users to download videos from the YouTube service for personal use,
which Complainant asserted was in direct violation of YouTube’s terms of
use. Respondent argued that the website included a prominent disclaimer
disassociating it from Complainant, and that its services work not in
competition, but in conjunction, with Complainant’s services. Pursuant to
Policy ¶ 4(a)(i), the Panel found that Complainant had established rights in
the YOUTUBE mark through registration and continuous use of the mark, and
that the <youtubex.com> domain name was identical to the YOUTUBE
mark. The Panel next found that Respondent failed to establish rights or
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii),
because Respondent’s use of the <youtubex.com> domain name to
redirect Internet users to its commercial website did not constitute a
bona fide offering of goods or services or a legitimate noncommercial or
fair use. Finally, the Panel found that Respondent was attempting to
attract, for commercial gain, Internet users who would be confused as to
Complainant’s affiliation with the <youtubex.com> domain name and
Respondent’s corresponding website. The Panel was of the view that this
indicated Respondent’s bad faith registration and use pursuant to Policy ¶
4(b)(iv). The Panel further concluded that inclusion of a disclaimer did not
mitigate bad faith registration and use by Respondent under Policy ¶
4(a)(iii). Thus, the Panel ordered that the <youtubex.com> domain
name be transferred from Respondent to Complainant.
Google Inc. v. Miller, FA 1067791 (Nat. Arb. Forum Oct. 24, 2007).
Netbooks, Inc. v. Lionheat Publishing
Complainant, Netbooks, Inc., owner of a U.S. trademark
registration for the NETBOOKS mark, brought a Complaint against Respondent,
Lionheat Publishing, for the <netbooks.net> domain name. Respondent
contended that, as the NETBOOKS mark was widely used by others on the
Internet, Complainant did not have sole rights in the mark. The Panel found
that this contention was unsubstantiated by evidence and irrelevant to the
Policy ¶ 4(a)(i) analysis, and that Complainant had sufficiently established
its rights in the NETBOOKS mark pursuant to Policy ¶ 4(a)(i). Complainant
further asserted that Respondent, a national or resident of the United
Kingdom, had constructive notice of Complainant’s registration of the
NETBOOKS mark prior to registering the <netbooks.net> domain name.
The Panel agreed with this assertion based on Respondent’s substantial
connections with the United States, and found that, as Respondent used the
disputed domain name for click-through advertising, Respondent lacked rights
and legitimate interests in the disputed domain name pursuant to Policy ¶
(a)(ii). However, the Panel then found that Complainant had failed to supply
sufficient evidence to support its argument that Respondent registered and
was using the <netbooks.net> domain name in bad faith pursuant to
Policy ¶ 4(a)(iii). The Panel based its finding on the fact that the
NETBOOKS mark was not well-known and, thus, Complainant failed to
demonstrate that Respondent intended to specifically use Complainant’s mark
to attract Internet users for commercial gain. Accordingly, the Panel
declined to transfer the <netbooks.net> domain name from Respondent
to Complainant.
Netbooks, Inc. v. Lionheat Publishing, FA 1069901 (Nat. Arb. Forum
Oct. 18, 2007).
IQ Products Company v. Gavin Lloyd
Complainant, IQ Products Company, brought a UDRP
Complaint against Respondent, Gavin Lloyd, for the <bugout.com>
domain name. Complainant holds a U.S. trademark registration for the BUGOUT
mark in connection with various insect repellant products that Complainant
has sold since at least 1994. Complainant originally registered the <bugout.com>
domain name in 1996 and had used the disputed domain name continuously until
inadvertently allowing its registration to lapse shortly prior to
Respondent’s registration. Respondent purchased the disputed domain name at
auction for $5,200 on July 15, 2007. Respondent did not contest
Complainant’s rights in the mark, but argued that the terms “bug” and “out”
are common English words and that Complainant’s federal trademark
registration was limited to “chemical insecticides.” Respondent asserted
that it planned to use the <bugout.com> domain name for a free,
advertiser-supported, travel related social networking community. The Panel
first found that the <bugout.com> domain name was identical to
Complainant’s BUGOUT mark pursuant to Policy ¶ 4(a)(i). The Panel next found
that Respondent did have rights and a legitimate interests in the <bugout.com>
domain name pursuant to Policy ¶ 4(a)(ii) because: (1)“bug” and “out” as
common English words used together are slang for “go away” or “leave” or
“hit the road;” (2) Respondent’s plans to develop a travel-related social
networking site is a bona fide offering of goods or services or a
legitimate noncommercial or fair use; and (3) the general use of the slang
“bug out” shows a connection to this legitimate use. The Panel finally found
that Complainant’s general allegation of Respondent’s bad faith registration
and use of the <bugout.com> domain name was insufficient, in light of
Respondent’s answer, to satisfy Policy ¶ 4(a)(iii). Accordingly, the Panel
denied the Complainant relief.
IQ Prods. Co. v. Gavin Lloyd, FA 1065183 (Nat. Arb. Forum Oct. 10,
2007).
Mothers Against Drunk Driving v. MaDD HaTT Entertainment
Complainant, Mothers Against Drunk Driving, brought a
claim against Respondent, MaDD HaTT Entertainment, for the <maddhattentertainment.com>
domain name. Complainant contended that, by merely incorporating its MADD
mark in the disputed domain name and profiting from the corresponding
website, Respondent infringed on Complainant’s rights in the mark.
Respondent, a hip-hop music and entertainment company, argued that it
acquired the <maddhattentertainment.com> domain name in order to
create a diverse network of sites and cross-promotion capabilities.
Respondent further contended that it spelled “madd” with an extra letter “d”
not to exploit Complainant’s MADD mark, but rather to keep in touch with its
hip-hop tradition of “flipping” words so “mad” would become “madd,” and
“hat” would become “hatt.” The Panel found that this misspelling, and the
addition of the generic term “entertainment,” did not sufficiently
distinguish the <maddhattentertainment.com> domain name from
Complainant’s MADD mark pursuant to Policy ¶ 4(a)(i). The Panel also found
that Respondent had no rights or legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(a)(ii), as the website that resolved from the
disputed domain name contained a pay-per-click search engine, which is not a
bona fide offering of goods or services or a legitimate noncommercial
or fair use. Lastly, the Panel found that Respondent had registered and was
using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)
because it was profiting from the disputed domain name and Respondent should
have been aware of Complainant’s rights in the MADD mark at the time of
registration. The Panel thus ordered the transfer of the <maddhattentertainment.com>
domain name from Respondent to Complainant.
Mothers Against Drunk Driving v. MaDD HaTT Enter., FA 1074881 (Nat.
Arb. Forum Oct. 10, 2007).
Wal-Mart Stores, Inc. v. James D’Souza
Complainant, Wal-Mart Stores, Inc. brought a UDRP
complaint against Respondent, James D’Souza, for the <walmarrt.com>
domain name. Complainant contended that it had used the WAL-MART mark since
1962 and held several governmental registrations of the mark world-wide,
including in India. Respondent, a resident of India, argued that it was not
aware of Complainant’s WAL-MART mark, and that the disputed domain name was
significantly dissimilar to Complainant’s mark because it contained no
hyphen and an extra letter “r.” Moreover, Respondent contended that the <walmarrt.com>
domain name was originally registered in 2000, without objection from
Complainant, so Respondent was not acting in bad faith when it recently
purchased the disputed domain name. The Panel first found that, pursuant to
Policy ¶ 4(a)(i), the <walmarrt.com> domain name was confusingly
similar to Complainant’s WAL-MART mark. Next, the Panel found that
Respondent had no rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii) because Respondent’s only asserted rights were
based on the fact that it paid for the <walmarrt.com> domain name,
which is insufficient to find rights or legitimate interests without further
affirmative evidence. Lastly, the Panel found Respondent’s contention that
it was unaware of Complainant’s “world-famous service mark to be utterly
disingenuous,” and as such, sufficient evidence to establish Respondent’s
bad faith registration and use of the disputed domain name under
Policy ¶ 4(a)(iii). Consequently, the Panel ordered the transfer of the <walmarrt.com>
domain name from Respondent to Complainant.
Wal-Mart Stores, Inc. v. D'Souza, FA 1060854 (Nat. Arb. Forum Oct.
15, 2007).
E-PRACTICE
World Wide Translations: ICANN Testing Internationalized
Domain Names
Historically, Internet domain names have been primarily
comprised of English letters and characters. Since computers can only
understand numbers, domain name registrars use the standard American
Standard Code for Information Interchange (ASCII)
to establish
numerical representations of these characters. ASCII encoding is
used on most computers and printers.
In April 2002, ICANN released a
discussion paper discussing the importance and potential implication of
non-ASCII encoded top-level domain names (“TLDs”) to make the Internet more
accessible to those who speak languages other than English. Subsequently, in
June 2003, ICANN announced the
deployment of internationalized domain names (“IDNs”) to allow for the
development of language-specific websites that would benefit a greater
diversity of geographic, ethnic, cultural, and linguistic populations. These
IDNs use a “punycode”
translation to transfer the numbered encoding from ASCII characters into
non-ASCII characters that are universally represented in
many different languages by a singular “Unicode.”
Since this time, ICANN has monitored the progress of, and continued to
implement, usage of
IDNs.
In July 2007,
ICANN announced a plan to publicly evaluate the ease and success of IDN
usage. In mid-October 2007, the evaluation period commenced, and ICANN has
encouraged the public to participate and provide feedback. The initial
phase allows individuals to register a domain name in one of eleven test
languages – Arabic, Persian, Chinese (simplified and traditional), Russian,
Hindi, Greek, Korean, Yiddish, Japanese and Tamil – and develop a wiki with
their name in their own language. After the first week of testing,
ICANN reported that over 128,000 people had participated, with over 37%
registering their domain names in Chinese.
Upon completion of the evaluation period, ICANN intends
to determine how usage of these IDNs can best be implemented on a permanent
global scale. ICANN’s goal is to
“make the Internet less English-dependent”, and allow Internet users
around the world to develop and connect to websites using their own native
languages.
In
The News
ICANN Investigates “Domain Name Front Running”
NewsFactor.com, October 25, 2007: ICANN’s Security and
Stability Advisory Committee is currently investigating reports of what it
has termed “domain name front running.” The term was coined to refer to
activity comparable to “a stock broker buying or selling shares ahead of a
client's trade, in anticipation of a movement in price.” ICANN received
reports that domain names were being snatched up after an initial search
revealed their availability, but before prospective buyers could purchase
them. This activity has led to suspicions that there is an insider with
access to search requests, who is gauging interest in the domain names and
then purchasing them before legitimate buyers have an opportunity to do so.
Domain name front running exceeds the level of mere domain name speculation
because interest is actually quantified and can then be used to generate
profit with the sale of a domain name, which is known to be desired, to the
original prospective buyer. ICANN hypothesizes that there are several ways
in which the practice could be facilitated, including using software or
viruses to collect data. ICANN is actively investigating the issue to
determine if it is in fact occurring, and, if so, what measures need to be
taken to address the activity. Although there is no evidence confirming the
allegations, ICANN is most concerned that even the suspicion “portrays an
unfavorable image of the parties associated with the domain name
registration process in specific, and of the domain name community in
general.” ICANN is working diligently to dispel this concern.
Link to Full Story
Infamous Cybersquatter Fined $164,000
PCWorld, October 16, 2007: John Zuccarini, the infamous
cybersquatter responsible for linking the children’s television show-related
<bobthebiulder.com> and <teltubbies.com> domain names to adult content, has
been fined again by the Federal Trade Commission, this time for $164,000.
The FTC said that Zuccarini had registered hundreds of websites linking to
domain names to legitimate advertising this time, instead of adult content.
In 2002, Zuccarini pled guilty to typosquatting and child pornography
charges and served a prison sentence until 2005. He was ordered to refrain
from typosquatting, but the lucrative activity proved too much to resist for
Zuccarini. Prior to his previous conviction, the U.S. Department of Justice
estimated that Zuccarini was making about $1 million each year from
typosquatting. Although Zuccarini agreed to a settlement in the most recent
case, he has not admitted guilt with regard to the charges.
Link to Full Story
Cheap Domain Names Fueling Cybersquatting in Asia
c|net News.com, October 16, 2007: Cybersquatting has
caught on in Asia. The low price of domain names, often as little as $3 per
year, is fueling the practice, according to industry experts. As in the rest
of the world, generic top-level domains (“gTLDs”) are the most popular
cybersquatting territory. In Asia the most popular gTLDs are China’s “.cn,”
India’s “.in,” and Korea’s “.kr.” Janna Lam, managing director of
Singapore’s IP Mirror, also noted “that cybersquatters have now earned a new
moniker, ‘domainers.’” She goes on to explain that the domain name industry
now supports a market for trading in domain names, but that Singapore
strongly discourages the activity. Lam believes that domain name monitoring
is the solution to the problem. In the U.S., corporations like Microsoft
have resorted to taking legal action to deal with the problem. Recently,
Microsoft has initiated 15 different legal actions targeting more that 1,500
infringing domain names, most in the last year alone, including three suits
in federal court regarding infringing domain names according to Microsoft’s
vice president and deputy counsel, Nancy Anderson. These actions have
resulted in judgments of more then $5 million and settlements worth more
than $1 million. Anderson said that consumer education and legal enforcement
are necessary to solve the worldwide cybersquatting problem. Link
to Full Story
No Big Changes Yet for WHOIS Database
computerworld.com, November
1, 2007: The Generic Names Supporting Organization, a committee of ICANN,
recently voted 17-7 to continue studying the possibility of making changes
to the WHOIS database. Currently, the WHOIS database is open to everyone,
and contains the names and contact information of domain name owners. Those
pushing for change of the current system argue that this information should
be made private in order to protect individual registrants. However, many
point to the benefits of the current open system in exposing those who use
domain names for copyright infringement, scamming, and similar unsavory
uses. This is not a new issue: the ICANN committee has been discussing
changes to the WHOIS system for seven years.
Link to Full Story
Ireland Embraces “.ie” Domain Names
Irish Times, October 31, 2007: In response to the
growing worldwide popularity of blogs and social networking sites, Ireland
now allows Internet users to register vanity websites using the “.ie”
top-level domain. The “.ie” domain is reserved for Irish residents or people
with links to Ireland. In fact, to register a domain name with the “.ie”
top-level domain, one must provide an Irish utility bill, driver’s license,
or other supporting documentation. The new domain is reserved for
individuals, who must register full names as they appear on the
documentation they have provided; nicknames or other variations are not
allowed at this time. Chief executive of the IE Domain Registry, David
Curtin, said: "As well as Bebo and Facebook users, we expect a keen interest
from people who want to secure their name online or who want to secure a
family name for generations to come."
Link to Full Story
PROCEDURAL UPDATES
New Supplemental Rules
The National Arbitration Forum issued new Supplemental
Rules, effective November 1, 2007. One of the two main changes addresses
situations where the WHOIS information may not exactly match, allowing
complainants to argue that the information is actually that of one
registrant. The second change allows both the complaint and the response to
reach a maximum of fifteen pages each.
View the new Supplemental Rules at
http://domains.adrforum.com/main.aspx?itemID=631&hideBar=False&navID=237&news=26.
Upcoming
events
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20-23, 2008 |
DomainFEST ‘08
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January
25-26, 2008 |
American
Bar Association Business Law Section, Cyberspace Law Committee Winter
Working Group
Minneapolis, MN |
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