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In This Issue

Lucid Technologies, Inc. v. Dynamo.com LLC c/o Spam Protected

Groovr, Inc. v. Active Interactive, Inc.

Tips for Changing a Domain Name Without Losing Internet Traffic

Domain Registration a Part of Campaign 2008

Recent Decisions

Hoar Construction, LLC v. Jinsu Kim

Complainant, Hoar Construction, LLC, brought a UDRP claim against Respondent, Jinsu Kim, for the <hoar.com> domain name. The disputed domain name was registered for the purpose of profiting by attracting Internet users to advertisement and commercial sites. The Panel found that the <hoar.com> domain name was identical to Complainant's HOAR mark pursuant to Policy ¶ 4(a)(i). In addition, the Panel found that, because the traffic advertising business, where it trades on the rights of others, is not lawful, Respondent had not established legitimate rights or interests in its use of the disputed domain name. For the same reason, the Panel found that Respondent registered and used the domain name in bad faith under Policy ¶ 4(a)(iii). Therefore, the Panel transferred the <hoar.com> domain name from Respondent to Complainant. Hoar Constr., LLC v. Jinsu Kim, FA 1093845 (Nat. Arb. Forum Dec. 10, 2007).

Groovr, Inc. v. Active Interactive, Inc.

Complainant, Groovr, Inc., brought a UDRP complaint against Respondent, Active Interactive, Inc., for the <gruvr.com> domain name. Complainant used its GROOVR mark in connection with Internet and mobile telephone based social networking and blogging. Respondent registered and began using the disputed <gruvr.com> domain name on December 5, 2006, to display local concert information. The Panel found Complainant's registration of the <groovr.com> domain name on April 11, 2006 did not establish trademark rights because common law trademark rights only began to accrue on December 6, 2006, when Complainant used the mark in commerce by activating the website. Therefore, the Panel found that Complainant did not have trademark rights prior to Respondent's December 5, 2006 registration and failed to meet its burden under Policy ¶ 4(a)(i). Accordingly, the Panel denied Complainant's request and refused to transfer the <gruvr.com> domain name. Groovr, Inc. v. Active Interactive, Inc., FA 1103425 (Nat. Arb. Forum Dec. 18, 2007).

Amazon.com, Inc. v. Object Publishing Software, Inc. c/o Tim Hennings

Complainant, Amazon.com, Inc., brought a UDRP complaint for the <amazon-on-demand.com> domain name. Respondent alleged that the disputed domain name was comprised only of generic terms and that it accrued rights in the AMAZON mark when Complainant "opened up their product database to the whole world." In addition, Respondent offered to provide a clearer disclaimer on the website that it was not affiliated with Complainant in order to resolve this dispute. The Panel found that because Complainant had a registered mark, Respondent's argument that the term was generic failed under Policy ¶ 4(a)(i). In addition, the Panel found that Respondent's offer to provide a clearer disclaimer was not sufficient to avoid a finding of no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii), or bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Therefore, the Panel transferred the <amazon-on-demand.com> domain name from Respondent to Complainant. Amazon.com, Inc. v. Object Publ'g Software, Inc. c/o Tim Hennings, FA 1103565 (Nat. Arb. Forum Dec. 11, 2007).

Lucid Technologies, Inc. v. Dynamo.com LLC c/o Spam Protected

Complainant, Lucid Technologies, Inc., brought a UDRP claim against Dynamo.com LLC for use of the <lucid.com> domain name. The Panel found that Complainant had not met the burden of demonstrating that Respondent registered the <lucid.com> domain name in bad faith under Policy ¶ 4(a)(iii). Complainant was founded in 1991, and had used the LUCID mark in relation to its products and services since 1994. Respondent, however, registered the <lucid.com> domain name in 1988. The Panel concluded that where a domain name has been registered prior to the complainant's first use of its mark in commerce, the complainant is obliged to show both registration and use in bad faith to satisfy the UDRP claim. Consequently, the Panel denied Complainant's claim for the <lucid.com> domain name. Lucid Techs., Inc. v. Dynamo.com LLC c/o Spam Protected, FA 1095287 (Nat. Arb. Forum Dec. 17, 2007).

Ab Initio Software Corporation v. Neela Patel

Complainant, Ab Initio Software Corporation, challenged Respondent's use of the <abinitiosupport.com> domain name. The disputed domain name incorporated the entire AB INITIO mark and a generic term describing Complainant's business. Respondent, however, asserted that its use of the disputed domain name was legitimate and noncommercial because it was offering free support for users of Complainant's products. The Panel found that the website that resolved from the <abinitiosupport.com> domain name was actually offering Respondent's competing products, and that the disputed domain name was registered with full knowledge of Complainant's business. Consequently, the Panel found that Respondent failed to demonstrate rights or legitimate interests under Policy ¶ 4(a)(ii). The Panel ordered that the disputed domain name be transferred to Complainant. Ab Initio Software Corp. v. Neela Patel, FA 1105679 (Nat. Arb. Forum Dec. 17, 2007).

RMC Publications, Inc. v. Jocob Steve

Complainant, RMC Publications, Inc., brought a UDRP complaint against Respondent, Jocob Steve, for the <rmcprojects.com> domain name. Complainant contended that Respondent was competing with Complainant's services, and that Respondent's sole purpose was to divert Internet traffic to its website. Respondent responded to the Complaint in two brief sentences, indicating that the disputed domain name was registered for software development purposes. After finding that the <rmcprojects.com> domain name was confusingly similar to Complainant's mark, the Panel found that Respondent failed to meet its burden of proving any rights or legitimate interests in the <rmcprojects.com> domain name under. Finally, the Panel concluded that Respondent had registered and was using the disputed domain name in bad faith because Respondent was creating confusion with Complainant's services and likely profiting from the disputed domain name. The Panel thus ordered that the <rmcprojects.com> domain name be transferred to Complainant. RMC Publ'ns., Inc. v. Jocob Steve, FA 1095188 (Nat. Arb. Forum Dec. 11, 2007).

E-PRACTICE

Tips for Changing a Domain Name Without Losing Internet Traffic

There are many different reasons why people may need to change their domain names. Companies may want to re-brand their products, resolving websites may outgrow their capacities, or domain names may be found to be infringing upon the trademark rights of others. Regardless of the reason, domain name registrants will likely be concerned with losing Internet traffic upon transitioning to the new domain name.

Google, one of the primary online search engines, uses a ranking system that determines how prominently a website is featured in search engine results pages (SERPs). The higher the ranking, the more Internet traffic is typically routed to that website. (Click here to see how your website ranks.) Domain names influence these rankings, and a few leaders in the industry have provided helpful suggestions on how to maintain or quickly gain back high rankings when transitioning to a new domain name.

Jill Olkoski, owner of Aldebaran Web Design in Seattle, changed domain names in 2007 and reported on her findings. After changing over to the new domain name in mid-May, Internet traffic to her website initially plummeted. However, the website's Google ranking quickly returned to #7 overall in mid-June. Ms. Olkoski identified one of the keys to her success as promptly updating the Google sitemap file of her new domain name to help Google find the "new" content posted to the resolving website.

Ross Dunn, founder and CEO of Stepforth Search Engine Placement Inc., also recommends registering the new website with Google Webmaster Central as soon as possible, and issuing a widespread press release that emphasizes the new domain name. Giving Google more advanced notice of the change will help decrease the potential loss of Internet traffic.

Many registrants will want to redirect Internet users from the previously-used domain name to the new one. An efficient way to do this while attempting to maintain search engine rankings is to use a 301 redirect. In fact, Internet users can redirect "non-www" Uniform Resource Locators ("URLs") to "www" URLs using a 301 redirect in order to collectively maximize the popularity of the corresponding website.

However, Scottie Claiborne, owner of the search engine optimization company Right Click Web Services, encourages registrants who want to redirect their websites to initially use a 302 temporary redirect so that the original URL remains in Google's index. This allows the original website rankings to remain intact during the transition. Once the new domain name builds its rankings through the redirections, it will be featured prominently in SERPs and registrants can change to a 301 permanent redirect.

Changing domain names is often difficult and requires many steps, but the potentially negative implications can be kept under control if the transition is managed efficiently.

In The News

2007 Spam Update

Yahoo! Finance, December 12, 2007: The annual email and spam report recently released by Barracuda Networks, Inc. contains some bad news. The report found that about 90-95% of all email sent in 2007 was spam, a huge number compared to an estimated 5% in 2001. Researchers are surprised by the percentage, especially since the passage of the CAN-SPAM Act in 2004. This act set restrictions on sending junk mail, and at the time it was passed only 70% of all email was spam. The reason spam can be hard to stop is that spammers know how to hide their tracks. They often register new domain names or redirect mail through other blogs or free website providers to help hide their identities. Barracuda also tells Internet users to be aware of the latest in spam techniques, including the use of attachments, such as pictures, documents, or PDF files. In addition, spammers have begun to take advantage of national holidays by tailoring commercial e-mails to coincide with big shopping days, including "Black Friday" and "Cyber Monday," which occur around Thanksgiving. Link to Full Story

Domain Registration a Part of Campaign 2008

Wired.com, December 20, 2007: Domain names are now playing a part in the race for the White House. Three leading Democratic candidates, Hillary Clinton, John Edwards, and Barack Obama, have all registered domain names intended for websites other than the candidates' traditional campaign sites. For example, Clinton recently registered two domain names presumably to attack Obama's history in the Illinois legislature, <votingpresent.com> and <votingpresent.org>, although currently there are no active websites that resolve from the domain names. These sites are most often registered and used for negative campaigning, or reporting on the negative campaigning of others. In the past, polls have shown voters do not respond well to negative campaigning from specific candidates. This method of registering domain names seemingly unconnected to a particular candidate allows that candidate to post negative information about an opponent without displaying it on their own campaign website. In addition to attacking rival campaigns, candidates have also used these domain names to demonstrate that rival candidates are engaging in negative campaigning. Link to Full Story

Ex-Microsoft Employee Charged With Fraud for Manipulating Domain Name Registrations

PCWorld.com, December 8, 2007: A former employee of Microsoft was indicted for fraud on charges that she accrued over $1 million between 2000 and 2004 by falsifying expense reports she filed for domain name registration charges. Carolyn Gudmunson, previously a manager at Microsoft's MSN division, is being charged with using her position in order to run a number of different scams related to the falsely acquired fees for domain name registrations. If convicted, she faces up 20 years in prison and a $250,000 fine. In addition, Gudmunson was listed as the administrative contact responsible in December 1999 when Microsoft's Passport.com website crashed because someone forgot to renew the domain name registration, leaving 60 million Hotmail users without e-mail service. Link to Full Story

VeriSign Releases December Industry Brief

DomainNameNews.com, December 21, 2007: VeriSign, the worldwide registry operator for ".com" and ".net" top level domains (TLDs) released its December report. According to the report, the domain industry continues to grow; approximately 12 million new domain names were registered during the third quarter of 2007. The quarter saw 31% more domain names registered than the same period last year, bringing the total number of TLDs to 146 million. According to VeriSign, the growth can be attributed in part to "consumers publish[ing] their own podcasts, as well as, add[ing] custom calendars and personal portal pages." The report also emphasizes the growing problem of purchasing domains for the purpose of parking. According to the report, an estimated 20% of all registered TLDs are parked. VeriSign pointed out that it is becoming increasingly more difficult to distinguish between parked and active TLDs. Link to Full Story and Link to Report

New Phishing Scam Targets Facebook Users

Wired.com, January 3, 2008: Phishers have moved on from their traditional target of financial services websites to the popular social networking site Facebook. Some users found strange postings on their "walls" along with a link leading to a fake Facebook login page. The page is hosted on a Chinese ".cn" domain and, while it does actually log users into Facebook, it stores a copy of their user names and passwords. Hackers can then use this personal information for a number of uses, including attempting to logon to other sites and checking profiles for personal information that can then be used to install virus software. Although the offending phishing link looks like a typical Facebook link, copying the URL into a search engine will reveal its nature as a phishing site. Banks and other financial services websites, traditional targets of phishers, have stepped up security using a number of different techniques intended to thwart fraudulent conduct. For the Facebook scam, a user should change her password immediately, both on Facebook and other sites on which she uses the same password. 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.