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Your Source for Domain Dispute
News and Information |
July 16, 2008,
Vol. 9 No. 07 |
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
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In
This Issue
Apple Inc. v. Bahktina
The Final Frontier: ICANN’s gTLD Expansion May Provide New Opportunities
ICANN briefly loses control of its own domain names
Internet Service Providers Get New Battle Plan in the War on Spam
Recent
Decisions
Head Technology GmBH v. Texas International Property
Association
Complainant, Head Technology GmBH., brought a UDRP
claim against Respondent, Texas International Property Associates, for the
<headsportswear.com> domain name. Complainant is a sportswear
company that operates under its HEAD mark. Respondent argued that it was
using two generic, descriptive words and is entitled to do so because it
registered the disputed domain name first. The Panel found Respondent’s
competing use of the disputed domain name did not give Respondent rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). Additionally, the Panel found the disputed domain name was
confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i) and
Respondent had registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(a)(iii). Therefore, the Panel found the requisite
elements of the UDRP were satisfied and transferred the disputed domain name
to Complainant.
Head Tech. GmbH v. Tex. Int’l Prop. Assocs. – NA NA, FA 1172984
(Nat. Arb. Forum June 2, 2008).
Gettysburg Flag Works, Inc. v. Precision Marketing
Solutions, Inc. and Jeffrey Reynolds
Complainant, Gettysburg Flag Works, brought a UDRP
claim against Respondent, Precision Marketing Solutions, Inc. and Reynolds,
for the <gettysburgflags.com> domain name. The Panel found Policy ¶
4(a)(i) was met because Complainant had established common law rights in its
GETTYSBURG FLAG mark and the disputed domain name was confusingly similar to
Complainant’s mark. Complainant and Respondent both are in the business of
selling flags. Respondent argued it was unaware of Complainant’s business
and was using the disputed domain name which was comprised of generic terms
to sell its own flags. The Panel was not persuaded by these arguments and
found Respondent lacked rights and legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii) and Respondent acted in bad faith
pursuant to Policy ¶ 4(a)(iii). Therefore, the Panel transferred the
disputed domain name to Complainant.
Gettysburg Flag Works, Inc. v. Precision Mktg. Solutions, Inc. & Reynolds,
FA 1179369 (Nat. Arb. Forum June 10, 2008).
TOTO USA Inc. v. Owida
Complainant, TOTO USA Inc., brought a UDRP complaint
against Respondent, Akram Owida, for the <totology.com> and <totology.net>
domain names. Complainant alleged that the disputed domain names were
confusingly similar to its TOTO mark. Respondent argued that the TOTO mark
was a generic term referring to lottery and betting, and that it was in the
business of developing lottery and betting systems. The Panel concluded
that the disputed domain names were confusingly similar to
Complainant’s mark pursuant to Policy ¶ 4(a)(i). Prior to contact between
Complainant and Respondent, the disputed domain names were not being
actively used. However, when Complainant contacted Respondent inquiring
into the possibility of a transfer, the disputed domain names began to
resolve to adult-oriented sites and were offered for sale. The Panel found
such use does not establish rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). And finally, the timing of the switch to adult oriented
material, along with Respondent’s offer to sell, were cited by the Panel to
establish that the disputed domain names were registered and being used in
bad faith pursuant to Policy ¶ 4(a)(iii). The Panel transferred the
disputed domain names from Respondent to Complainant.
TOTO USA Inc. v. Owida, FA 1178653 (Nat. Arb. Forum June 10, 2008).
Sun Studio Entertainment, Inc. v. Memphis Recording
Services
Complainant, Sun Studio Entertainment, Inc., brought a
UDRP claim against Respondent, Memphis Recording Services, for the <memphisrecordingservice.com>
domain name. In the 1960’s, Elvis Presley and other well-known artists
recorded in Memphis at the original Memphis Recording Studio. Since then,
the original studio has closed and Complainant now owns the building where
the former Memphis Recording Service once operated. Respondent is located
in England and registered the disputed domain name around the time it
obtained a trademark registration from the European Union for its MEMPHIS
RECORDING SERVICES mark. Respondent’s disputed domain name resolved to a
website which highlighted the history surrounding the former studio. The
Panel also found Respondent was engaged in a legitimate business of selling
media products. Therefore, the Panel found Respondent had rights and
legitimate interests in the dispute domain name pursuant to Policy ¶
4(a)(ii). Based on this analysis, the Panel declined to transfer the
disputed domain name.
Sun Studio Entm’t., Inc. v. Memphis Recording Serv., FA 1189842
(Nat. Arb. Forum June 19, 2008).
Apple Inc. v. Nelia Bahktina
Complainant, Apple Inc., brought a UDRP complaint
against Respondent, Nelia Bahktina, for the <ituneslatino.com> domain
name. The disputed domain name was registered well after Complainant had
obtained exclusive rights in the ITUNES mark. Respondent argued that the
<ituneslatino.com> domain name was registered for the purpose of selling
contact lens and sunglasses online. Regardless, the Panel found that the
disputed domain name was confusingly similar to Complainant’s ITUNES mark
pursuant to Policy ¶ 4(a)(i). At the time of the Complaint the <ituneslatino.com>
domain name did not resolve to anything. The Panel concluded that this
established Respondent’s lack of rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii). Finally, Respondent
expressed that he was “willing” to “assign his URL,” if a “lucrative
proposition” by a “billion dollar company” came along. Under these
circumstances, the Panel found that Respondent had registered and was using
the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Accordingly, the Panel transferred the <ituneslatino.com> domain name
from Respondent to Complainant.
Apple Inc. v. Bahktina, FA 1178697 (Nat. Arb. Forum June 2, 2008).
E-PRACTICE
The Final Frontier: ICANN’s gTLD
Expansion May Provide New Opportunities
Domain name registrants have long
desired greater flexibility in consumer choice and market differentiation,
especially beyond the commonly known
generic top-level domains (“gTLDs”) of “.com,” “.net,” and “.org.” As
such, gTLD expansion has been in development for over three years, headed by
the
Generic Names Supporting Organization (“GNSO”), which is a subcommittee
of the
Internet Corporation for Assigned Names and Numbers (“ICANN”). On June
26, 2008, ICANN affirmatively
voted to expand the array of gTLDs that can be registered. Considerable
debate has surfaced concerning the underlying advantages and disadvantages
of the proposed implementation, which will likely affect businesses and
other entities operating on the Internet.
In 2005, the GNSO
began exploring the technological and other logistical issues that would
be associated with allowing the expansion of gTLDs. The
three main categories of issues included preservation of public order
and morality, efficiency of the application process, and trademark
protection. The GNSO addressed these concerns by drafting
numerous recommendations that the board of ICANN subsequently approved
in its June 26, 2008 vote.
ICANN
addressed initial concerns regarding implementation specifications,
including content regulation, trademark protection, and the outline of the
actual process. To this end, ICANN drafted a
flowchart detailing the proposed registration process, and has stated
its hope to begin accepting applications for new gTLDs by the second quarter
of 2009. Moreover, it plans to utilize an
objection-based procedure administered through an international
arbitration body to deal with proposed offensive and/or trademark-infringing
gTLDs. One notable scenario involves entities with concurrent rights in an
identical word trademarks that compete to register a corresponding gTLD.
Under the proposed implementation, this dispute would be resolved through an
auction.
ICANN’s contemplation and approval of this expansion
has generated substantial discussion in the Internet community. One of the
more prevalent expressed benefits is the potential to
reduce cybersquatting given the cost of registering a new gTLD, which
could
potentially cost up to US $100,000.00 each. Another issue concerns
public morality. Some believe that a proposed adult-oriented gTLD, such as
“.xxx,” would
remove such content spread across current gTLDs to one location on the
Internet, potentially reducing the difficulties in blocking these
websites.
Opponents of the proposed expansion assert that while
the cost may render cybersquatting more prohibitive, the expenses involved
would make it more difficult for smaller businesses or entities to
employ a defensive strategy with regards to trademark infringement. If
there are more gTLDs, the cost of preemptively registering domain names
reflecting an entity’s marks to reduce infringement will increase
substantially. Regardless of an entity’s successful registration of its own
gTLD, trademark owners will
still be required to monitor domain names that potentially infringe
their marks in current gTLDs as well as any newly registered gTLDs. Many
argue that the objection-based mechanism will not be used objectively, and
that ICANN will engage in
censorship.
Going forward,
the Internet community will need to evaluate the benefits and opportunity
costs of registering their own gTLDs as that opportunity becomes available
through ICANN. All entities interested in their own gTLD are encouraged to
monitor ICANN’s website for future additional information.
In
The News
ICANN briefly loses control of its
own domain names
Australian IT News, July 4, 2008: After an Internet registration
company it oversees was fooled into wrongfully transferring the domain
names, the Internet Corporation for Assigned Names and Numbers (ICANN) lost
control of two previously held domain names for a short time. The two
domain names were <icann.com> and <iana.com> (for the ICANN subdivision
known as the Internet Assigned Numbers Authority); the names were restored
to ICANN within twenty minutes, but because many internet directories retain
information for a day or two, some visitors might have been redirected to an
unauthorized site. ICANN has implemented new security measures and is
reviewing other security procedures to prevent such attacks in the future.
Link to Full Story
Yahoo Adds New Domains
YahooNews.com, June 19, 2008: Yahoo is expanding the
e-mail addresses that the organization provides by creating two new domain
names, “ymail” and “rocketmail.” The development will offer Internet users
who are frustrated with the limited e-mail address option left open on Yahoo
another chance to register an email address with Yahoo. This marks the first
time in Yahoo’s existence that they will be offering e-mail addresses that
do not contain the YAHOO mark. Yahoo has experienced a lower growth-rate in
e-mail addresses due to Google’s entrance into the e-mail market. In fact,
Google’s “gmail” domain name has been registered by over 30 million users
within the past year. Yahoo’s hope is to remain a leader in e-mail
registrants.
Link to Full Story
Internet Service Providers Get
New Battle Plan in the War on Spam
BBC News, June 27, 2008: The Messaging Anti-Abuse
Working Group (MAAWG), a well-respected anti-spam watchdog group, has
published new guidelines for how internet service providers (ISPs) should
combat the use of their services for spamming schemes. MAAWG has
recommended that ISPs use separate servers for received and forwarded
e-mails, and that they block the use of the port known as port 25, through
which most spam travels. Experts do admit, however, that even if the
majority of ISPs adopt these measures, it is unlikely that Internet users
will see a notable reduction in spam in the near future.
Link to Full Story
ICANN’s Domain Tasting Solution is a Partial Success
DomainNews.com, June 27, 2008: The Coalition Against
Domain Name Abuse (“CADNA”), a coalition comprised of 11 globally recognized
brand-name companies announced that ICANN’s proposal to reduce “Domain
Tasting” was a partial success. However, CADNA emphasized that even though
the new proposal was partially successful, it would not eliminate “Domain
Tasting,” which is CADNA’s final goal. "Domain Tasting" is the process by
which registrants obtain a domain name and track its traffic over the course
of the five-day Add Grace Period (“AGP”). If it does not yield enough
traffic to make it immediately profitable, the registrant drops the domain
name within five days in order to get a refund of the 20-cent registration
fee. ICANN’s proposals include reducing or even eliminating the refund.
However, organizations that profit from massive domain name registrations
have made it difficult for ICANN to completely eliminate “Domain Tasting.”
Link to Full Story
Upcoming
events
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August 7-12, 2008 |
ABA Annual Meeting
New York City, NY
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October 23-35, 2008 |
AIPLA Annual Meeting
Washington, D.C. |
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November 2-7, 2008 |
ICANN Meeting
Cairo, Egypt |
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