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In This Issue

Pete Wentz v. Phil Lynch

Legislation Requiring Sex Offenders to Register Electronic Information Moves Ahead

Dell Sues Cybersquatters

Al Gore and Other Luminaries Pay Tribute to Vint Cerf

Recent Decisions

Pete Wentz v. Phil Lynch

Complainant, Pete Wentz, brought a UDRP complaint against Respondent, Phil Lynch, for the <petewentz.com> domain name. Complainant is the co-founder, bassist, and primary lyricist of the world-famous musical group Fall Out Boy. Since as early as 2001, Pete Wentz and Fall Out Boy have been performing and producing records that have achieved tremendous success. Respondent asserted that he had been friends since 1993 with an individual named Peter Charles Wentz, who is an international flight attendant and hobbyist photographer. Respondent alleged that he intended to start a photography business together with Peter Charles Wentz, and so had registered the <petewentz.com> domain name to promote this business. However, Respondent registered the disputed domain name in 2004 and had since failed developed the website. At the time of the Complaint, the <petewentz.com> domain name resolved to a links page, which redirected Internet users to various third-parties sites that sold Pete Wentz and Fall Out Boy products and merchandise. The Panel first found that Complainant could assert common law rights in the PETE WENTZ mark by virtue of its well-known use as a personal name, and that the <petewentz.com> domain name was identical to Complainant's PETE WENTZ mark pursuant to Policy ¶ 4(a)(i). The Panel next found that, because Respondent's WHOIS information did not reflect the interest of Peter Charles Wentz, Respondent was not commonly known by the name and lacked rights and legitimate interests in the disputed domain name under to Policy ¶ 4(a)(ii). Lastly, because the Panel found that Respondent was commercially benefiting from its use of the disputed domain name by accruing "click-through" fees, the Panel concluded that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). Accordingly, the Panel transferred the <petewentz.com> domain name from Respondent to Complainant. Wentz v. Lynch, FA 1082087 (Nat. Arb. Forum Nov. 8, 2007).

F. Korbel & Bros. v. Anderson

Complainant, F. Korbel & Bros., brought a claim against Respondent, Richie Ann Anderson, for the <korbelranch.com> and <korbelkennel.com> domain names. Complainant is the owner of a family of federally registered marks incorporating the KORBEL mark, associated with well-known Korbel champagne and other beverages. Complainant contended that Respondent was not authorized to use the KORBEL mark. Respondent asserted that it was the daughter of Complainant's president and that it originally registered the disputed domain names with the full knowledge and consent of Complainant. Respondent argued that this Complaint arose out of a family dispute, that it had already discontinued use of the disputed domain names in connection with its ranch and kennel business, and that it did not intend to renew its registration of the disputed domain names. The Panel first found that, pursuant to Policy ¶ 4(a)(i), Complainant had established rights in the KORBEL mark and that the <korbelranch.com> and <korbelkennel.com> domain names were confusingly similar to the mark. The Panel next found that Respondent was making no use of the disputed domain names, had indicated an intent not to renew them, and had offered to sell them to Complainant. Accordingly, the Panel then concluded that Respondent had no current rights or legitimate interests in the disputed domain names under to Policy ¶ 4(a)(ii). Although the Panel found that Respondent's current use of the disputed domain names amounted to bad faith, it ultimately concluded that Respondent had not acted in bad faith when it registered the disputed domain names, as Respondent had likely registered the names with the full knowledge and consent of Complainant. Thus, the Panel denied Complainant's request and refused to transfer the <korbelranch.com> and <korbelkennel.com> domain names to Complainant. F. Korbel & Bros. v. Anderson d/b/a Triple Ranch d/b/a TBR Quarter Horses, FA 1080253 (Nat. Arb. Forum Nov. 8, 2007).

H-D Michigan Inc. v. Henrik Hessbo

Complainant, H-D Michigan Inc., brought a UDRP claim disputing Respondent's ownership of the <motoharley.com> domain name. Since 1903, Complainant has manufactured, advertised, and sold motorcycles and accessories under the famous HARLEY-DAVIDSON and HARLEY marks. Respondent contended that the <motoharley.com> domain name was registered on a behalf of a business owner in Greece, that it was no longer affiliated with the disputed domain name, and that the website that resolved from the disputed domain name was no longer active. The Panel first found that the <motoharley.com> domain name was confusingly similar to the HARLEY mark under Policy ¶ 4(a)(i), a point not contested by Respondent. The Panel next found that Respondent did not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii) because Respondent, not commonly known by the disputed domain name, was using the disputed domain name to advertise motorcycle rental services in competition with Complainant's business. Finally, Respondent's registration and use of the <motoharley.com> domain name was in bad faith under Policy ¶ 4(a)(iii) because the Panel found the Respondent's use of the domain name created a likelihood that users would associate Complainant with the website. Accordingly, the Panel transferred the <motoharley.com> domain name to Complainant. H-D Michigan Inc. v. Henrik Hessbo d/b/a Fuc Et Viva, FA 1082084 (Nat. Arb. Forum Nov. 13, 2007).

Lee Iacocca v. Texas International Property Associates

Complainant, Lee A. Iacocca, brought a claim against Respondent, Texas International Property Associates, for the <leeiacocca.com> domain name. Complainant, a famous personality and business icon, argued that it had used the LEE IACOCCA mark for more than 20 years in connection with food products, educational services, philanthropy, and general celebrity services, and that Respondent had no rights in the disputed domain name. Respondent argued that Complainant's trademark registration for the LEE IACOCCA mark was merely pending and that Complainant's affidavit was self-serving and not sufficient to establish common law rights in the mark. Moreover, Respondent asserted rights and legitimate interests in the <leeiacocca.com> domain name through its use as a portal website. The Panel first found that Complainant had presented sufficient evidence to support a finding of common law rights in the LEE IACOCCA mark, as consumers have clearly come to associate the mark with Complainant. Thus, the Panel found that the <leeiacocca.com> domain name was identical to Complainant's LEE IACOCCA mark under Policy ¶ 4(a)(i). Next, the Panel found that Respondent lacked rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii), as its use as a portal website was not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and Respondent was not commonly known by the disputed domain name. Lastly, the Panel concluded that Respondent had constructive knowledge of Complainant's rights in the famous LEE IACOCCA mark prior to registration, and that Respondent was merely profiting off confusion between the <leeiacocca.com> domain name and Complainant's business. Accordingly, the Panel transferred the <leeiacocca.com> domain name from Respondent to Complainant. Iacocca v. Tex. Int'l Prop. Assoc., FA 1088017 (Nat. Arb. Forum Nov. 29, 2007).

RockResorts International LLC and The Vail Corporation v. HempWorld, Inc. c/o Matthijs Huijgen

Complainant, RockResorts International LLC and The Vail Corporation, brought a UDRP claim against Respondent, HempWorld, Inc., for the <rockresort.com> domain name. Complainant argued that it had used the ROCKRESORT mark since 1968 in connection with travel agency and hotel services and that the website that resolved from the disputed domain name was a commercial "pay-per-click" site that offered services in competition with Complainant. Respondent, a registrant of hundreds of domain names, contended that it was not aware of the existence of Complainant or the ROCKRESORT mark when it registered the <rockresort.com> domain name in March 1995, and that it was not using the disputed domain name in bad faith. Respondent argued that Complainant's eight year delay in pursuing the <rockresort.com> domain name indicated that Complainant was abusing the UDRP to gain ownership of the disputed domain name. The Panel first found that Complainant's <rockresort.com> domain name was identical to the ROCKRESORT mark under Policy ¶ 4(a)(i). Second, the Panel found that Respondent's use of the dispute domain name to operate a competing, commercial "pay-per-click" site was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and, therefore, Respondent failed to demonstrate rights or legitimate interests in the <rockresort.com> domain name under Policy ¶ 4(a)(ii). Finally, the Panel concluded that Respondent  was currently using the disputed domain name for commercial gain. Thus, the Panel found that Respondent had registered and was using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). The Panel granted Complainant's request and transferred the <rockresort.com> domain name from Respondent to Complainant. Rock Resorts Int'l LLC & The Vail Corp. v. HempWorld, Inc. c/o Matthijs Huijgen, FA 1082160 (Nat. Arb. Forum Nov. 19, 2007).

LTD Commodities, LLC v. R. Neiwert

Complainant, LTD Commodities, LLC, brought a UDRP complaint against Respondent, R. Neiwert, for the <ltdcatalog.info>, <distributingcatalog.com>, <distributingcatalog.info>, and <commoditiescatalog.info> domain names. Although Complainant alleged that it owned trademark registrations for the ABC DISTRIBUTING and ABC DISTRIBUTING, INC marks (collectively, "ABC marks"), the Panel found that these marks were not actually owned by Complainant, but rather associated with an alleged subsidiary of Complainant, its relationship to which Complainant provided no evidence. Accordingly, the Panel found that, pursuant to Policy ¶ 4(a)(i), Complainant had no rights in the <distributingcatalog.com> and <distributingcatalog.info> domain names, as Complainant had not established either trademark or common law rights in the ABC marks. The Panel next found that, while Complainant had established valid trademark rights in the LTD COMMODITIES and LTD COMMODITIES, INC marks (collectively, "LTD marks"), the <ltdcatalog.info> and <commoditiescatalog.info> domain names were not confusingly similar to Complainant's LTD marks pursuant to Policy ¶ 4(a)(i). The Panel based its conclusion on the premise that neither of the disputed domain names incorporated the LTD marks in their entirety, and that the common terms "ltd," "commodities," or "catalog" did not, on their own, carry any exclusive rights, nor are distinctive elements of Complainant's mark. Finding that Complainant had not established rights in the ABC marks and that the <ltdcatalog.info> and <commoditiescatalog.info> domain names were not identical or confusingly similar to the LTD marks, the Panel declined to analyze Policy ¶¶ 4(a)(ii) and (iii). Consequently, the Panel declined to transfer the <ltdcatalog.info>, <distributingcatalog.com>, <distributingcatalog.info>, and <commoditiescatalog.info> domain names to Complainant. LTD Commodities, LLC v. Neiwert, FA 1074737 (Nat. Arb. Forum Nov. 12, 2007).

E-PRACTICE

Legislation Requiring Sex Offenders to Register Electronic Information Moves Ahead

As Internet social networking continues to expand, parents' safety concerns are growing. While popular websites like Facebook and MySpace provide children with opportunities to communicate with friends, abuses of these services have been well-documented. Consequently, these social networking companies are taking additional measures to ensure children's safety, specifically from sex offenders. In December 2006, MySpace began working with a background verification company to develop software that helps identify MySpace accounts held by sex offenders. By late July 2007, MySpace reported that it had identified and deleted 29,000 such accounts.

MySpace has also lobbied for legislation to assist in its efforts, and the federal government has actively undertaken this initiative. Currently, all convicted sex offenders are required by statute to register their names, DNA samples, fingerprints, social security numbers, and work and home addresses with the federal government. In January 2007, Rep. Earl Pomeroy (D-ND) and Rep. Paul Gillmor (R-OH) co-sponsored and introduced a bill in the House of Representatives entitled the "Keeping the Internet Devoid of Sexual Predators (KIDS) Act," which requires sex offenders to register their e-mail addresses and instant messaging ("IM") names. In February 2007, Rep. Melissa Bean (D-IL), another co-sponsor of the KIDS Act, introduced a second bill entitled "Safeguarding America's Families by Enhancing and Reorganizing New and Efficient Technologies (SAFER NET) Act of 2007," which calls for a national education campaign on Internet safety. In October 2007, Rep. Debbie Wasserman Schultz (D-FL) introduced a third bill entitled "Providing, Resources, Officers and Technology to Eradicate Cyber Threats (PROTECT) to our Children Act of 2007," which provides resources for tracking sex offenders online. On November 13, 2007, all three of these bills were approved in the House of Representatives and sent to the Senate for review.

In February 2007, Senator John McCain (R-AZ) and Senator Charles Schumer (D-NY) co-sponsored and introduced a bill in the Senate entitled the "Securing Adolescents From Exploitation Online (SAFE) Act of 2007" that would also require sex offenders to register their e-mail addresses and instant messaging ("IM") names. This bill is currently still pending before Congress.

Efforts are also being made on an international level. The Australian Province of New South Wales recently passed laws requiring Internet sex offenders to register their e-mail addresses, IM names, and Internet Protocol ("IP") addresses. Britain is also considering instigating similar requirements.

Proponents of these bills have applauded Congress's efforts to better track sexual predators online. They claim that this will help the Internet become a safer place for children to interact with their peers using the various social networking sites. However, critics of the bill claim that these efforts will create a heavy burden on civil liberties, as well as provide a false security blanket.

In The News

WIPO's Director-General to Retire Early

International Herald Tribune, November 15, 2007: Kamil Idris, the Sudanese director-general of the U.N. patent agency WIPO says he will retire next year. This announcement is on the heels of a recent WIPO audit indicating that Idris changed his birth date last year to 1954 after previously claiming to have been born in 1945, allegedly in order to gain promotions and enhance retirement benefits. Idris was originally slated to hold the top WIPO position until 2009, but will now step down a year early. This move is likely based on opposition towards Idris from the United States and other Western countries after these accusations came to light. The United States and several other Western countries recently blocked passage of the WIPO budget based on Idris' charges. Idris has served as the Director-General of WIPO for the past 10 years. Link to Full Story

Britain Works to Unite Internet and Telephone Networks

BBC.com, November 26, 2007: Britain is trying to create a directory for Internet phone numbers through a new Telephone Number Mapping system ("Enum"). Nominet, the company that administers Britain's ".uk" top-level domain, will administer the system. The process is similar to what the Domain Name System (DNS), a huge directory of computers connected to the Internet used to find the location of a website, does for the Internet. Current plans are for the Enum directory to be filled with the phone numbers of people using voice over IP (voip) servers to make phone calls over the Internet. Voip is currently a popular choice for many businesses, but is mainly used for intra-office calling, rather than between businesses. This new system would allow voip users to find and access other users of other voip servers in the system more easily. Having an easy way for those networks to interconnect could create a huge jump in the use of the voip system. According to Jay Daley, the technology director at Nominet, the system is "comparable to . . . mobile phone operators let[ting] text messages travel between their networks." Britain is not alone in building this directory: Australia and Ireland have both started work on national Enum directories as well. Link to Full Story

Dell Sues Cybersquatters

Washington Post, November 30, 2007: Computer giant Dell Inc. has filed federal lawsuits against several domain name registrars and individuals for holding and profiting off of more than 1,000 domain names that are confusingly similar to those owned by Dell and its subsidiaries. In its complaint, Dell is accusing these registrars of "cybersquatting," which generally constitutes a common scheme to register or use a domain name that intentionally profits off a third party's trademark. Dell also alleges that the defendants are abusing "domain name tasting," a practice which allows registrants to test the popularity of a domain name for up to 5 days to see how successful it will be. If the registrant is unhappy with the results, he or she is under no obligation to pay the approximately $6 registration fee. Dell claims that the defendants, instead of dropping the domain after the 5-day test period, merely transfer them from one registrar to the next, thus profiting from the domain names without paying for them. Dell also included counterfeiting charges in its complaint, a claim that is thus far novel in domain registration cases. Link to Full Story

Al Gore and Other Luminaries Pay Tribute to Vint Cerf

ICANN, November 1, 2007: On October 30, 2007, ICANN saluted Vint Cerf as his reign as the organization's Board Chair drew to a close. For those who could not attend, ICANN has now posted the video tributes from the event. Video messages from Al Gore, former Vice President of the United States and 2007 Nobel Peace Prize winner, Dr. Tarek Camel, Minister of Communications and Information Technology for the Arab Republic of Egypt, Dr. Eric Schmidt, Chairman of the Board and Chief Executive Officer of Google, Commissioner Viviane Redding, Member of the European Commission (Information Society and Media), and Dr. Charles Elachi, Director of Jet Propulsion Laboratory, are included. Former Vice President Gore opened the tributes with a reflection on the impact that Cerf has had on billions of people's lives through his pivotal role in the Internet's creation, fostering competition and growth in the domain name industry, advocating for the coordination, not control, of the Internet, and making global networking a possibility. Link to Full Story and Video

Verisign to Scale Back and Focus on Internet Infrastructure

MercuryNews.com, November 14, 2007: Verisign, Inc., the Internet infrastructure giant, announced that it is making a major strategic shift in its business model. Verisign plans to scale back its portfolio in order to focus solely on the core of "managing the '.com' and '.net' domain name registry or on securing online financial transactions and verifying consumers' identities on the Internet." To facilitate the adjustment back to its core businesses, Verisign will eliminate several of the businesses in its current portfolio, including its communications, billing, and commerce divisions. Industry experts suggest that Verisign's strategy is a solid one that will "position it for future market success." Link to Full Story

Hackers Demonstrate They Can Still Use Domain Names to Unleash Vicious Attacks

InternetNews.com, November 19, 2007: Typosquatting, an old tactic employed by cyber criminals, has been around forever. Until now, organizations have been able to protect themselves through the use of server-based security products which could trace the IP address associated with a domain name to determine if it originated from a trustworthy source. Hackers recently found their way around this old security method by "hijacking" IP addresses. The hackers went straight for a big target — Yahoo. The hackers were able to locate an unused Yahoo IP address and used it to authenticate their fraudulent domain. The victims and security systems never knew they were working with a malicious site. Internet experts are still reeling and are currently trying to determine how the hackers were able to effectuate their plan. Yahoo quickly responded by shutting down its compromised IP address. Industry experts are concerned about Web 2.0's security holes, but still suggest that server-based security products are the best defense currently available against these malicious attacks. In addition, experts now recommend adding browser plug-ins to complete any comprehensive security plan. With this added level of security, even if hackers were able to exploit the IP address of a popular, trusted domain name owner like Yahoo and make it past any server-based security products, the plug-ins would provide protection because they read a website's content, detecting any malicious content and warning users about the suspicious content. Link to Full Story

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