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In This Issue

Yahoo! Inc. v. Sergey Korshunov

Sky-High Aspirations: Cloud Computing May Benefit Internet Content Storage
 

Algorithm Created to Guide Top-Level Domain Applicants
 

Hong Kong Top-Level Domain Leads All Others as Most Dangerous on the Web

Recent Decisions

Scottish Ballet v. Duncan Macleod a/k/a DuncanSketch

Complainant, Scottish Ballet, brought a UDRP claim against Respondent for use of the <scottishballet.com> domain name.  Complainant was incorporated in 1978 as “The Scottish Ballet Company Limited,” and changed its name to “Scottish Ballet” in 2005.  Complainant registered the SCOTTISH BALLET mark with the UKIPO in 2006, and thus the panel found that Complainant had rights under Policy ¶ 4(a)(i).  The panel was unconvinced under Policy ¶ 4(a)(ii) that Respondent’s registration of a large number of domain names to create a Scottish portal evidenced preparations for legitimate use.  The panel did find, however, that Respondent had not registered the <scottishballet.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) since it was comprised of two descriptive terms. Additionally, there was no evidence that Respondent had registered the disputed domain name with knowledge of Complainant or with intent to sell.  Therefore, the panel denied transfer of the <scottishballet.com> domain name to Complainant.  Scottish Ballet v. Macleod, FA 1163688 (Nat. Arb. Forum May 20, 2008)..

Yahoo! Inc. v. Sergey Korshunov

Complainant, Yahoo! Inc., brought a UDRP claim against Respondent contesting its use of the <яху.com> domain name.  As a preliminary issue, the panel concluded that the disputed domain name is an internationalized domain name and is one and the same with its PUNYCODE translation [<xn—s1ad3a.com>].  The panel found that the Cyrillic letters of the disputed domain name were phonetically equivalent to Complainant’s YAHOO mark.  Although Respondent argued that it had registered the disputed domain name to create a website for an education facility in the city of Yarolslav, Russia, the panel concluded that Respondent had not shown demonstrable preparations to use the <яху.com> domain name pursuant to Policy ¶ 4(a)(ii).  The panel also held that Complainant is well-known on the Internet, and the similarity when the letters are transliterated demonstrates that Respondent knew of Complainant’s mark at the time of registration.  The panel ordered transfer of the <яху.com> domain name to Complainant.  Yahoo! Inc. v. Korshunov, FA 1176666 (Nat. Arb. Forum May 21, 2008).

Sabine Ullmann d/b/a Barefoot Saddles v. Black Forest Stables, Inc.

Complainant, Barefoot Saddles, brought a UDRP claim against Black Forest Stables, Inc. for use of the <barefootsaddle.com> domain name.  The panel found that Complainant had established secondary meaning in the BAREFOOT SADDLE and BAREFOOT marks as a result of Respondent’s extensive use of the marks in commerce.  The panel found that Respondent was a direct competitor of Complainant’s saddle business, and therefore, found that Respondent’s use of the disputed domain name to advertise competing products was an illicit siphoning-off of profits from Complainant.  The panel also concluded that although Respondent was once a distributor of Complainant’s product, that relationship did not create implied authority for use of the trademark.  Therefore, the panel ordered transfer of the <barefootsaddle.com> domain name to Complainant.  Ullman v. Black Forest Stables, Inc.  FA 1164380 (Nat. Arb. Forum May 14, 2008).

MooseJaw Mountaineering and Backcountry Travel, Inc. v. Texas International Property Association

Complainant, MooseJaw Mountaineering and Backcountry Travel, Inc., brought a UDRP claim against Respondent, Texas International Property Associates, for the <moosejawmountaineering.com> domain name.  The panel found Policy ¶ 4(a)(i) was met because Complainant had evidenced sufficient rights in its MOOSEJAW and MOOSEJAW MOUNTAINEERING AND BACKCOUNTRY TRAVEL marks and the disputed domain name was confusingly similar to both marks.  Respondent argued Complainant had not produced a sufficient prima facie case that Respondent lacked rights or legitimate interests in the disputed domain name because the section of the Complaint relating to this element of the Policy consisted of merely one ninety-word paragraph.  However, the panel found the Policy did not contain a minimum word requirement and Complainant had produced sufficient allegations to satisfy Policy ¶ 4(a)(ii).  Additionally, the panel found Respondent had acted in bad faith and thus Policy ¶ 4(a)(iii) had been satisfied.  Therefore, the panel transferred the disputed domain name to Complainant.  Moosejaw Mountaineering v Tex. Int’l Prop. Assoc., FA 1153693 (Nat. Arb. Forum May 5, 2008).

Trans-High Corp., Inc. v. 420 Magazine

Complainant, Trans-High Corp., Inc., brought a UDRP claim against Respondent, 420 Magazine, for the <misshightimes.com> domain name.  Complainant operates a contest entitled “Miss High Times” for the female readers of the magazine it operates under the HIGH TIMES mark.  The panel found Respondent’s <misshightimes.com> domain name was confusingly similar to Complainant’s HIGH TIMES mark pursuant to Policy ¶ 4(a)(i).  Respondent asserted it had rights and legitimate interests in the disputed domain name because it was currently using the disputed domain name to operate a blog for airline stewardesses.  The panel, however, found Respondent had previously used the disputed domain name to compete with Complainant in the very narrow market of hemp counterculture publications.  Thus, the panel determined Respondent’s previous use of the disputed domain name was not sufficient to show rights or legitimate interests under Policy ¶ 4(a)(ii).  The panel further found Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).  Therefore, the panel transferred the disputed domain names from Respondent to Complainant.  Trans-High Corp., Inc. v. 420 Magazine, FA 1163475 (Nat. Arb. Forum May 2, 2008).

Google Inc. v. YiWuShi Shuangfeng Jixie Youxian Gongsi

Complainant, Google Inc., brought a UDRP claim against Respondent, YiWuShi Shuangfeng Jixie Youxian Gongsi, for the <youtube.net> domain name.  Respondent argued the disputed domain name should not be transferred because it was originally registered on August 14, 2005, which Respondent argued would pre-date Complainant’s rights in the YOUTUBE mark.  The panel, however, held Respondent could only assert rights in the disputed domain name dating back to when Respondent became registrant of the disputed domain name on September 30, 2007.  Additionally, Respondent argued that Complainant did not register its YOU TUBE mark in China, where Respondent resides, and Complainant had not yet recorded its assignment of the trademark registration from its predecessor.  The panel found Complainant had established rights in the trademark because Complainant need only establish it has rights in the mark in some jurisdiction, not necessarily in the jurisdiction in which Respondent resides.  Also, the panel held Complainant only needs to provide evidence it has taken assignment of the mark from its predecessor because recording the transfer with a governmental authority can be a lengthy process.  The panel then found the requisite elements of the UDRP had been met and thus the panel transferred the disputed domain name.  Google Inc. v. YiWuShi Shuangfeng Jixie Youxian Gongsi, FA 1159972 (Nat. Arb. Forum May 5, 2008).

E-PRACTICE

Sky-High Aspirations: Cloud Computing May Benefit Internet Content Storage

Given the exponential worldwide growth of the Internet and the vast arrays of information therein, those depending on the Internet seek to archive and store its web pages for future use.  Both the sheer size of computing power required to process the storage and retrieval of Internet content as well as potential legal issues are significant considerations. 

Internet Archive is one of the most well-known online storage vehicles.  This organization stores many expired or replaced web pages in an attempt to preserve Internet content, given the finite capacity of host computers, thereby creating an Internet “library.”  Internet Archive’s storage tool is named the WayBack Machine, which currently holds over 85 billion web pages dating as far back as 1996.  Such data storage provides many people with numerous benefits, including historians and scholars conducting research; marketing consultants studying the layout and efficiency of previous website incarnations; patent searchers examining others’ innovations; and companies scrutinizing the business plans of other organizations within their industries.

Numerous companies—most commonly journalistic sources—have utilized Internet archiving.  For example, the Los Angeles Times, Chicago Tribune, Washington Post, and New York Times have sizable archive features for past newspaper content.  In an attempt to set itself apart, the New York Times recently unveiled its newest archival tool: the TimesMachine.  This feature offers print subscribers the opportunity to view historical Times articles dating back to the years 1851-1922, while non-subscribers can peruse a sampling of these articles (pieces post-1922 are still available in the original online archives).  While the move may not be monetarily beneficial to the Times’ bottom line, the creators are hopeful that the able to be browsed interface and unlimited access for subscribers will cater to those curious about historical news and advertisements, and retain current customers.

One of the main dilemmas that hindered Internet archiving was the cost of operating and housing the necessary server and computing power.  The concept of “cloud computing,” which may be defined as utilizing the vast processing power of a network akin to a supercomputer, seeks to fill this void in insufficient infrastructure.  Cloud computing, originally designed to harness supercomputers for sophisticated calculations, is providing new opportunities for everyday businesses to store their data.  Several well-known Internet companies, such as Amazon and Google, currently assist businesses seeking these ends.  WebCite assists in archiving scholarly or reference materials, while ProQuest caters to the newspaper industry.  Recently, Apple announced a cloud computing program for Apple computers, iPhones, and other Internet devices.

Other potential drawbacks to archiving include copyright issues, which were the subject of legislation presented to the Canadian Parliament in 2005.  The bill proposed banning caching or archiving copyrighted web content.  There are also questions concerning the ability of the U.S. government to subpoena archived items.  The publicized incident with Internet Archive in 2007, which received U.S. Senate attention, is illustrative of this issue.  Companies must also consider the technical limitations, such as outages, computer connectivity, and data protection.

Moreover, website owners may wish to avoid having their web content picked up by automatic web crawlers.  “Robots Exclusion Protocol,” commonly called “robots.txt,” may provide some level of privacy by defining what parts of a website are off-limits to web crawlers.  However, businesses should be cautioned as some UDRP panels have found that, absent convincing justification for robots.txt usage, they represent “an indicia of bad faith [in UDRP cases].” Moreover, the U.S. District Court for the Eastern District of Pennsylvania recently ruled against a company suing over the apparent technical failure of the Internet Archive to block access to its web pages during litigation via a robots.txt file.  The Court stated that the opposing law firm’s ability to view the web pages due to the technical error was not unlawful.  Parties should therefore avoid placing undue trust in the efficacy of these devices.

In the end, it appears that the trend of large-scale Internet storage and archiving will become more common, especially as network and computing power is consolidated and expanded.  While there are considerable drawbacks in the legal and technical realms, there is little doubt that businesses will continue to scrutinize the utility of Internet storage for improving marketability and efficiency.

In The News

Algorithm Created to Guide Top-Level Domain Applicants

Domainnews.com, May 14, 2008: Computer Scientist at the National Institute of Standards and Technology (“NIST”), Paul E. Black has created an algorithm to guide applicants in registering new top-level domains (“TLDs”).  The algorithm was developed at the request of the Internet Corporation for Assigned Names and Numbers (“ICANN”) and will analyze current TLDs to see if newly proposed TLDs are confusingly similar.  ICANN has placed an emphasis on creating distinct TLDs in order to prevent confusion and fraud while navigating the ever-growing Internet.  The algorithm will compare the proposed TLD to existing TLDs and give it a score based on visual likeness.  ICANN will then use this score in determining whether a proposed TLD will be accepted.   Link to Full Story

A Compromise in Net Policing

Guardian.co.uk, May 29, 2008:  The Internet Governance Forum (“IGF”) of stakeholders provides some oversight to the generally un-checked Internet.  The IGF is a worldwide board that meets to discuss critical Internet issues such as: openness (the free flow of ideas and information); security (protecting users and networks); e-criminals (child abusers, etc); cultural and linguistic diversity; and issues of access, particularly in the developing world. It takes no votes and makes no decisions. Rather, it advises bodies that run the Internet day-to-day, such as the Internet Corporation for Assigned Names and Numbers (“ICANN”).  Though most of the members of the IGF are from the United States and the United Kingdom, there has been a push to create national IGF’s to discuss domestic issues and present them at the worldwide IGF.  Link to Full Story

Bogus iTunes Page Snares Phishing Victims

CNET.com, May 21, 2008: Apple’s iTunes, the popular Internet source for downloadable music, has now joined the ranks of eBay and PayPal as targets of phishing schemes.  Attracted by Apple’s large and lucrative online presence, phishers have constructed a site that reportedly looks like an iTunes billing page, and asks for current credit card information, as well as a social security number, and mother’s maiden name.  According to Andrew Lochart of Proofpoint, Apple has never been the target of phishing before, but is a natural target due to its prominence on the web. Link to Full Story

Class-Action Accusation of Click Rate Inflation Against Citysearch and Ticketmaster

CNET.com, May 27, 2008:  A Los Angeles law firm has filed suit against Citysearch, the directory site, and Ticketmaster, the event ticketing site, alleging that the websites have engaged in, or encouraged, “click fraud.”  The accusation of “click fraud” refers to the suspicion that clicks on advertising links are meant only to drive up the rate the advertiser pays, and not to purchase the product; in this suit, the named plaintiff claims that the number of clicks on his ads rose suspiciously.  The class action suit names anyone in the U.S. who has purchased pay-per-click advertising space on Citysearch as plaintiffs in the case.  Link to Full Story

Hong Kong Top-Level Domain Leads All Others as Most Dangerous on the Web

CNET.com, June 3, 2008: The probability of downloading undesirable software continues to increase, and, according to a recent McAfee report, Hong Kong’s “.hk” top-level domain (“TLD”) is the most likely culprit for security threats to Internet users.  The McAfee Mal Web report, which serves as a safety guidebook to the most dangerous areas online, reports that almost 20 percent of websites with the “.hk” TLD present a download security risk to visitors.  Other dangerous country codes include China (“.cn”), the Philippines (“.ph”), Romania (“.ro”) and Russia (“.ru”).  Some of the safest country codes include Finland (“.fi”), Japan (“.jp”), Norway (“.no”), Slovenia (“.si”), and Colombia (“.co”).  The report also found that, in general, the chance of downloading spyware, viruses, or other undesirable software from the Internet increased over 40 percent in 2007. Link to Full Story

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