|
|
Your Source for Domain Dispute
News and Information |
May 30, 2008,
Vol. 9 No. 05 |
Welcome to Domain News, a complimentary
news service of the National Arbitration Forum. The National
Arbitration Forum is one of the
world's largest neutral administrators of arbitration services and one
of three ICANN-approved providers. We invite you to visit our website
at
www.adrforum.com.
The
National
Arbitration Forum
invites you to
subscribe directly to Domain News. If you have been forwarded this
issue, and wish to receive a clean copy with active links, please send your
contact information and e-mail address to
domain-news@adrforum.com.
Type "SUBSCRIBE" in the subject header, and you will be added to our growing
list of recipients.
In
This Issue
Deutsche Lufthansa AG v. Future Media Architects, Inc.
Hit the Road, Brandjackers … Protecting Your Company’s Brand
Cybersquatters Involved in London Mayor Race
Need Information in a Crisis? You Might Be Better Off Looking to Facebook
Recent
Decisions
OpenTable, Inc. v. Web Brands c/o WebBrands.com
The complainant, a supplier of reservation and guest
management software for restaurants, brought a UDRP claim against the
respondent for use of the <opentables.com> domain name. Respondent
argued that the disputed domain name was comprised entirely of generic
terms. The Panel concluded that the complainant had established common law
rights to the OPENTABLE mark dating back to 1999 under Policy ¶ 4(a)(i).
The Panel also found that the respondent’s use of the disputed domain name
to operate a website with links to competing services demonstrated both the
respondent’s lack of rights and legitimate interests under Policy ¶
4(a)(ii) and registration and use in bad faith under Policy ¶ 4(a)(iii).
Thus, the Panel ordered the transfer of the disputed domain name to the
complainant.
OpenTable, Inc. v. Web Brands, FA 1163837 (Nat. Arb. Forum Apr. 28,
2008).
Deutsche Lufthansa AG v.
Future Media Architects, Inc.
The complainant, Deutsche Lufthansa AG, brought a UDRP
claim against the respondent, Future Media Architects, Inc., disputing
respondent’s use of the <lh.com> domain name. A majority of the
three-member Panel ordered the transfer of the disputed domain name based on
the complainant’s trademark registrations under Policy ¶ 4(a)(i), as well as
the respondent’s lack of rights and legitimate interests and bad faith
registration and use. The dissent, however, maintained that the evidence in
the record was insufficient to show that the respondent had knowledge of the
complainant’s LH mark and that it had specifically targeted the
complainant’s mark under Policy ¶ 4(a)(iii). Nevertheless, the majority of
the Panel ordered the transfer of the <lh.com> domain name to the
complainant.
Deutsche Lufthansa v. Future Media Architects, FA 1153492
(Nat. Arb. Forum Apr. 17, 2008).
Oceaneering International, Inc. v. LJD c/o Osmund
Holm-Hansen
Oceaneering International, the complainant, brought a
UDRP claim against LJD, the respondent, for use of the
<h2oceaneering.com> domain name. The complainant owns several trademark
registrations for OCEANEERING. The respondent asserted that his nickname is
“H2O” and has intended to start an oceaneering consulting firm with his
father, whose initials are “OHH.” The respondent also maintained that he
was not aware of the complainant’s trademark registrations. The Panel
concluded that the addition of “H2” to the mark may be sufficient to
distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i).
The Panel also found that the respondent had sufficiently proven his future
intent to use the disputed domain name in connection with his consulting
business and therefore demonstrated rights and legitimate interests under
Policy ¶ 4(a)(ii). Finding sufficient evidence of the respondent’s rights
and legitimate interests, the Panel denied the complainant’s reqeust to
transfer.
Oceaneering Int'l., Inc. v. LJD, FA 1154298 (Nat. Arb. Forum
Apr. 22, 2008).
Baylor University v. Sysadmin Admin c/o
Balata.com Ltd
The complainant, Baylor University, brought a UDRP
claim against the respondent, Sysadmin Admin c/o Balata.com Ltd, for the
<ihatebaylor.com> domain name. The Panel found the disputed domain name
was confusingly similar to the complainant’s BAYLOR mark pursuant to Policy
¶ 4(a)(i). The Panel also found the respondent did not have rights or
legitimate interests in the name because it was using the disputed domain
name to operate a parked website and display adult-oriented content. In
addition, the Panel found that the respondent registered and used the
disputed domain name in bad faith under Policy ¶ 4(a)(iii) because it
offered the domain name for sale, had engaged in a pattern of registering
domain names that incorporated third-party famous marks, and was using the
confusingly similar domain name to attract Internet users for commercial
gain and display adult-oriented content. Therefore, the Panel transferred
the disputed domain name.
Baylor Univ. v. Sysadmin Admin, FA 1153718 (Nat. Arb. Forum, Apr.
11, 2008).
Mattel, Inc. v. Eva Avtots
The complainant, Mattel, Inc., brought a UDRP claim
against the respondent, Eva Avots, for the <hotwheelstrader.com>
domain name. The complainant sells toy cars under its HOTWHEELS mark. The
respondent asserted it intended to create a website relating to full size,
real cars such as classic automobiles and hot rods. The respondent
contended it was using the disputed domain name to operate a parking page
containing links regarding real cars to test the future potential of the
domain name. The Panel found that the disputed domain name was confusingly
similar to the complainant’s mark pursuant to Policy ¶ 4(a)(i). In
addition, the Panel found that the respondent did not have rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii) because the respondent
has been assessing the potential of the domain name since 2004 and has
provided no plans to actually use the <hotwheelstrader.com> domain
name. Finally, the Panel found that the respondent’s use of the
complainant’s mark to make money on advertising and customer procurement by
creating a likelihood of confusion was evidence of bad faith registration
and use pursuant to Policy ¶ 4(a)(iii). Therefore, the Panel transferred
the disputed domain names from the respondent to the complainant.
Mattel, Inc. v. Avots, FA 1153561 (Nat. Arb. Forum Apr. 21, 2008).
Magnetic Shield Corp. v. MuShield
The complainant, Magnetic Shield Corp., brought a UDRP
claim against the respondent, MuShield, for the <mumetal.com> domain
name. The respondent used the disputed domain to advertise and promote
magnetic shielding components identical to the complainant’s products. The
respondent argued that the term “mumetal” had become generic for high
permeability nickel-iron alloys despite the complainant’s patent. The Panel
declined to determine whether the trademark had become generic, but found
the respondent reasonably believed the complainant’s mark was generic and
thus benefits from a fair use defense under Policy ¶ 4(b)(iii). Thus, the
Panel found the respondent had rights and legitimate interests in the
disputed domain name. The Panel also found the respondent did not act in
bad faith because around the time it registered the disputed domain name the
complainant and its predecessor-in-interest admitted, by statements and
actions, that the term “mumetal” was generic despite its trademark
registration. Therefore, the complainant cannot claim the respondent could
not have believed the term “mumetal” to be generic at the time it registered
the disputed domain name. Therefore, the Panel declined to transfer the
disputed domain name.
Magnetic Shield Corp. v. MuShield, FA 1158545 (Nat. Arb. Forum Apr.
29, 2008).
E-PRACTICE
Hit the Road, Brandjackers
… Protecting Your Company’s Brand
In
June 2007, e-Practice first reported on the new phenomenon of “brandjacking,”
and this topic has received increased attention over the past year.
Generally,
brandjacking refers to “the criminal act of hijacking strong brands for
profit.”
MarkMonitor, a leading company specializing in online brand protection,
began releasing a Brandjacking Index in 2007, where it specifically defined
the term in the
report’s glossary as, “[t]o hijack a brand to
deceive or divert attention; often used in abusive or fraudulent activities
devised for gain at the expense of the goodwill, brand equity, and customer
trust of actual brand owners.” MarkMonitor has continued to track
brandjacking in 2008 and has also released quarterly reports discussing its
findings.
Initially, brandjacking efforts were
directed at the pharmaceutical industry, attempting to mislead consumers
as to the origin and validity of drug prescriptions. However, recent trends
suggest that brandjacking has
expanded to new industries, especially those concerning general consumer
goods, including automotive, food and beverage, and consumer packaged
goods. However, industry analysts worry it
could expand to other areas, as has already happened to Gucci, Toyota,
and Disney. Even large retailers such as Wal-Mart, Target, and Toys R Us
were
concerned during the holiday season about brandjackers diverting
business to fraudulent retail sites. According to
Rose Ryan, a research analyst at the market intelligence and information
technology firm
IDC, “[p]rotecting brand reputations, customer relationships and
revenues from online abuses is becoming as important to enterprises as
securing their networks, data and systems from Internet-borne threats.”
MarkMonitor’s
Winter 2007 Brandjacking Index shows that companies are starting to
fight back. It reports that
Microsoft,
Dell, and
Verizon all initiated highly publicized lawsuits to protect their
brands. According to Ihab Shraim, MarkMonitor’s chief security officer (CSO),
these lawsuits should
encourage CSOs to work with the General Counsel’s office to be “vigilant
about protecting their brands and their customers against evolving
threats.” The report also notes that online industry leaders such as
Microsoft, Yahoo, and Google are taking preventative measures by altering
their pay-per-click advertising programs. In fact,
Microsoft has initiated a multi-million dollar global outreach program
to provide news networks with the information necessary to inform the public
about how to combat general cybersquatting, including specifically
brandjacking.
So, how can a business protect its brand? An article
from the
American Bar Association recommends registering your brand name in as
many ways as possible, including as a trademark, within domain names
(containing both top-level domains as well as country-code domains), and by
purchasing relevant keywords on Google and Yahoo.
Ihab Shraim recommends internal education programs for employees and
increased marketing efforts for customers in order to publicize your brand
and expose abuses more easily. In addition, Microsoft offers products and
services that empower a company to self-patrol for cybersquatters, including
the
Strider URL Tracer that searches for typosquatted versions of an
existing domain name. Companies can also enlist the help of online security
providers that specialize in protecting brands, including
Net Enforcers,
Brand Intelligence,
CitizenHawk,
PBP,
CSC, and MarkMonitor.
In
The News
Sales Down for the “.Asia” Domain Name
Domainnews.com, April 14, 2008: The first few days
after the “.asia” domain name release to the general public, DotAsia was
selling over 10,000 domain names per day. Since then, there has been a
much-downgraded flow of around 2,000 to 4,000 domain name sales per day.
The CEO for DotAsia is very optimistic about the initial demand for “.asia”
domain names and is happy with the continued demand, even though it is
decreasing. The “.asia” domain names are most popular among Chinese
registrants, followed by Australian, New Zealand, Indian and Korean
registrants. The registrants are using these domain names for a wide
variety of things including restaurants, travel sites, and personal
networking sites. Japan and the United States are also in the top-ten in
“.asia” domain name registrations.
Link to Full Story
Editor's note: UDRP Complaints regarding .asia
domain names may be resolved with the National Arbitration Forum.
Privacy Policy Ramped Up
for Canadian Top-Level Domain “.ca”
Toronto Star, April 28, 2008: The Canadian Internet Registration Authority
(“CIRA”) has quietly announced that it is implementing a policy for the
Canadian top-level domain “.ca” that is intended to better protect the
privacy of hundreds of thousands of Canadian registrants. CIRA hopes that
this policy will serve as “a model for domain name registries around the
world.” Under the new policy, registrants will still be required to submit
the same contact information as under its current policy. However, CIRA
will no longer require that the registrants’ contact information be publicly
available through its directory. Only limited technical information will
have to be publicly disclosed, though registrants will have the choice to
voluntarily disclose more personal information. Corporate or organizational
registrants will still be required to have their full information publicly
disclosed. CIRA’s policy “recognizes that corporate information does not
raise specific privacy concerns since corporate information does not
constitute personally identifiable information.”
Link
to Full Story
Cybersquatters Involved
in London Mayor Race
Guardian.co.uk, April 25, 2008: Boris
Johnson, Brian Paddick, and Ken Livingstone have thrown their hats into the
ring for the London Mayoral race. However, the pervasive cybersquatters
have added intensity to the campaign. Dozens of domain names relating to
the candidates have been registered within the last month. Cybersquatters
see this as a win-win situation. These domain names see a lot of traffic,
which means cybersquatters are able to earn money while expressing their
views on a specific candidate (positive or negative). Many of the
infringing domain names display pictures of the candidates, or views of the
registrants about the candidate’s ability to perform the position of
London’s mayor. Additionally, if a cybersquatter owns a domain name that
coincides with the winner of the race, the cybersquatters could get
substantial offers to buy the domain name.
Link to Full Story
Need Information in a Crisis? You
Might Be Better Off Looking to Facebook
Telegraph.co.uk, April 30, 2008: A research team from the University of
Colorado has published a study that found Internet sites of various types,
including social networking sites, blogs, photo sites, and instant messaging
systems, were “better at providing warnings, help and lists of how
individuals were affected than traditional sources.” The research team
reported that after the Virginia Tech shootings, traditional emergency
response and reporting systems were slow to provide information, as
authorities struggled to update these systems. However, within two hours of
the first deaths, a page was started on Wikipedia giving accurate details of
the tragedy, and a group was created on Facebook notifying family and
friends about specific individual’s safety. Researchers also found that the
lack of accountability did not affect the relative usefulness of informal
internet reporting: rather than rumor-mongering, these sites tend to be
quite accurate. For example, during the California wildfires, traditional
media sites tended to focus on sensational news of fires near celebrities
homes, which was less helpful than the on-the-spot reporting of bloggers and
instant messengers.
Link to Full Story
Upcoming
events
| June 18-19, 2008 |
2008 International Forum on Online
Dispute Resolution (ODR)
Victoria, British Columbia
|
| June 22-27, 2008 |
ICANN Meeting
Paris, France |
Let
the National
Arbitration Forum know of
your upcoming events for listing in Domain News. Send event listing
information to:
domain-news@adrforum.com.
Please type "DOMAIN NEWS EVENTS" in the subject header.
back to top
|
