Your Source for Domain Dispute News and Information	January 15, 2009, Vol. 10 No. 01

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Citigroup Inc. v. Citilend Mortgage Co. 

Username-Squatting: The New Face of Cybersquatting? 

Launch of New “.tel” Domain Welcomed 

ICANN’s gTLD Proposal Hits a Wall

Citigroup Inc. v. Citilend Mortgage Co.

Complainant, Citigroup Inc., brought this UDRP claim against Respondent for the <citilend.com> domain name. The disputed domain named resolved to a website providing links to Complainant’s direct competitors. Respondent did not specifically deny any of Complainant’s allegations regarding confusing similarity or rights and legitimate interests. The Panel accordingly found that Complainant had established Policy ¶¶ 4(a)(i) and (ii). Respondent did alleged that it was not aware of Complainant’s rights in the CITI mark at the time it started its business in 1998. The Panel nevertheless found bad faith registration and use of the domain name because Complainant need not prove Respondent’s actual knowledge of its mark. Consequently, the Panel found bad faith under Policy ¶ 4(a)(iii) and ordered the transfer of the <citilend.com> domain name to Complainant. Citigroup Inc. v. Citilend Mortgage Co., FA 1233601 (Nat. Arb. Forum Dec. 1, 2008).

Enterprise Rent-A-Car Co. v. Enterprise Group c/oKadomtsev

Complainant, Enterprise Rent-A-Car Co., brought a UDRP claim against Respondent for the <enterpriseholding.com> domain name. Complainant argued Respondent was using a confusingly similar domain name to operate a website with links to Complainant’s competitors. Respondent argued that the term “enterprise” is a common word, and that Respondent operates in consulting and exporting food ingredients, which is not similar to Complainant’s car rental business. Respondent also maintains that it has registered a portfolio of domain names containing the term “enterprise” to use in conjunction with its business and none of these domain names contain terms related to car rental services. Respondent further contends the website resolving from the disputed domain name was operated by the registrar, and that after notice from Respondent, the registrar complied with Respondent’s request to take down the content. The Panel found Respondent’s disputed domain name was not confusingly similar to Complainant’s mark and that Respondent did not register and use the disputed domain name in bad faith. Thus the Panel denied Complainant its requested relief. Enterprise Rent-A-Car Co. v. Enterprise Group, FA 1229429 (Nat. Arb. Forum Dec. 9, 2008).

SPTC, Inc. & SPTC Delaware, LLC c/o Sotheby's Holdings, Inc. v. The Allgood Co.

Complainant brought a UDRP claim for the <sothebyshome.com> domain name. Complainant contended that the disputed domain name resolved to a links page displaying various advertisements and links to third-party competitors. Respondent asserted that it had made no use of the <sothebyshome.com> domain name, had provided no plans to do so, had not authorized anyone to use the disputed domain name, and was not aware of who had posted content to the resolving website. However, the Panel declined to accept Respondent’s arguments, reasoning that Respondent remained responsible for whatever use was made of the <sothebyshome.com> domain name. Moreover, even if Respondent truly had failed to make any active use of the disputed domain name, the Panel reasoned that this still only proved that Respondent lacked rights and legitimate interests under Policy ¶ 4(a)(ii). Having also found Policy ¶¶ 4(a)(i) and (iii) satisfied, the Panel ordered the transfer of the <sothebyshome.com> domain name to Complainant. SPTC, Inc. & SPTC Del., LLC c/o Sotheby's Holdings, Inc. v. Allgood Co., FA 1 231251 (Nat. Arb. Forum Nov. 11, 2008).

State Farm Mutual Automobile Insurance Co. v. Real Estate c/o Tuggle

Complainant, State Farm Mutual Automobile Insurance Co., brought a UDRP claim against Respondent for the <loritugglestatefarm.com> and <loritugglestatefarm.info> domain names. Complainant is an insurance company and Respondent is the ex-husband of “Lori Tuggle,” one of Complainant’s agents. Respondent asserted he was not aware of Complainant’s trademark rights when he registered the disputed domain names, and that he had intended to give the disputed domain names as a gift to his ex-wife. Respondent also stated that he approved the remedy requested by Complainant. The Panel, however, found that Respondent did not consent to a unilateral transfer of the disputed domain names because he submitted a Response disputing Complainant’s arguments and denying that he registered or was using the disputed domain names in bad faith. The Panel proceeded to analyze the parties’ arguments under Policy ¶ 4(a), found Complainant had satisfied the elements of the Policy, and transferred the disputed domain names to Complainant. State Farm Mut. Auto. Ins. Co. v. Real Estate, FA 1230602 (Nat. Arb. Forum Dec. 8, 2008).

Motorola, Inc. & Symbol Technologies, Inc. v. Giovinazzo

Complainants, Motorola, Inc. and Symbol Technologies, Inc., brought a UDRP Complaint against Respondent regarding the <symboleuropa.com> domain name. Complainant claimed rights in the SYMBOL mark based on its registrations throughout the world. Respondent contended that it was operating a restoration construction business under the Symbol Reformas name in Spain. No current active use of the disputed domain name was being made. The Panel determined that the disputed domain name was confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). The Panel also found that Respondent’s failure to make any active use of the <symboleuropa.com> domain name for the better part of a year since registration evidenced a lack of rights or legitimate interests under Policy ¶ 4(a)(ii) and that Respondent registered and was using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). Accordingly, the Panel ordered the transfer of the <symboleuropa.com> domain name to Complainant. Motorola, Inc. v. Giovinazzo, FA 1 231037 (Nat. Arb. Forum Oct. 31, 2008).

Is Username-Squatting the New Face of Cybersquatting?

As if trademark owners did not have enough to worry about, there is yet another reason that trademark owners should consider protecting their brand: username-squatting. Much like cybersquatting, Internet users can register usernames on popular websites to mislead others as to the true identity behind the username. Although it may not be as egregious as registering a cybersquatted domain name, registering squatted usernames can still harm a brand as well as individuals.

On social-networking sites such as Facebook, MySpace, and Twitter, users set up profiles and interact with other users. Registered users can post messages, share pictures, and share videos. These activities seem harmless by themselves, but a not-too-distant-past trend has reemerged that is reminiscent of the early days of the Internet. Similar to the domain name grabs that took place in the mid-90s, users are now registering profiles of famous names and brands, and sometimes sell the profiles back to the rightful owners. This has caused headaches for the rightful trademark owners, and undoubtedly will continue to do so.

A recent target was President-Elect Obama during the 2008 campaign. In July 2008, a member of the Republican National Committee reportedly set up a fake Facebook page of the then-Democratic presidential candidate. A search of the popular messaging site Twitter shows that famous brands such as Coke, Pepsi, and Nike have also already fallen prey to these activities. In an analysis of Twitter usage, out of the top 100 global brands, 58 had no presence, 9 may be controlled by the actual company, 27 are controlled by individuals that likely have no affiliation with the company, and 8 are Twitter protected, though it is unclear who controls the account.

The problem is not limited to famous names and brands. An individual’s name and profile may even be appropriated for legitimate purposes. Can or should an employer create profiles of employees to increase the company’s presence on professional networking sites such as LinkedIn? The best-case scenario is a company that maintains employee profiles in ways that benefit both the company and the employees. However, problems may arise when conflicts occur within the company which may spill over into these sites.

As widespread as the problem may be, there are solutions to these unauthorized uses. Websites such as YouTube allow media companies to make a somewhat lengthy copyright claim to unauthorized postings of content, and to have the content removed. Twitter, on the other hand, seems to have a less formal and more sweeping policy that may cause problems for legitimate users. Twitter reserves the right to “reclaim usernames on behalf of businesses or individuals that hold legal claim or trademark on those usernames.” This language seemingly gives Twitter greater power to police their site, seems to allow more tenuous and feeble complaints to cancel usernames, and could very well result in rightful users losing their accounts. While it does carry the potential for abuse, Twitter’s terms of use policy suggests that it is protecting itself from contributory liability from businesses who are trying to protect their brands. At least one blogger has called for changes in Twitter’s policy, and if more join in, there could be a movement toward a dispute resolution mechanism akin to the one used to resolve domain name disputes.  

New Domain Welcomed as Significant Innovation

The Guardian, December 3, 2008: The launch of the new “.tel” domain allows companies and individuals to create a virtual address book that will store a variety of contact information online, and will offer it to users according to where they are and how they connect to the service. A number of people around the world have signaled that “.tel” will be the greatest innovation the Internet has seen since “.com” was created. December 3, 2008 marked the beginning of the two-month "sunrise" period, during which the owners of trademarks can apply for “.tel” domains for their brands, products and businesses. After that period ends on February 3, 2009, domains will go on general sale on a first-come, first-served basis. Link to Full Story

Verizon Awarded “Largest-Ever” Cybersquatting Judgment

CNET News, December 24, 2008: In what the company is calling the largest cybersquatting judgment ever, Verizon Communications was awarded $33.15 million by a federal court in Northern California. Verizon’s trademark infringement claim was based on 663 domain names that could be easily confused with Verizon names. The default award was calculated based on a rate of $50,000 per domain name. Verizon may have difficulty collecting the money as the defendant, OnlineNIC, has not responded to any attempts at communication. Link to full story

ICANN’s gTLD Proposal Hits a Wall: Now What?

Circle ID, December 23, 2008: ICANN's plan to begin accepting applications for new generic top-level domains (gTLDs) in mid-2009 may have been forestalled by a surge of opposition from the global business community and the United States Government. In its comments of December 18th, the US Government questioned whether ICANN had adequately addressed the “threshold question of whether the consumer benefits outweigh the potential costs.” It is unclear how ICANN will react to the criticism. Link to full story

Panel Urges President-Elect Obama to Take Action Against Cybercriminals

Siliconvalley.com, December 8, 2008: In its expected report to Congress, a panel comprised of high-ranking governmental advisor and national security experts urge President-elect Obama to create a new White House office to combat cybercriminals. The panel outlines potential threats from hackers, thieves and foreign agents. The panel also urges Congress to pass laws giving investigators of cybercrimes better and faster access to information in order to solve these crimes and prevent repeat offenders. Link to Full Story

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