Your Source for Domain Dispute News and Information	March 03 , 2009, Vol. 10 No. 02

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Toyota Motor Sales U.S.A. Inc. v. The Car Openers Inc.

Podcasting and Copyright Claims

Malaysia Mulls ‘Cyber Court’ to Handle Internet Crimes

Ruling Near on Kentucky’s Plan to Seize Domain Names

Caris Ltd. v. Texas International Property Associates - NA NA

Complainant, Caris Ltd, brought a UDRP claim against Respondent for the <carishealth.com> domain name. Complainant applied for registration of its CARIS mark with the United States Patent and Trademark Office (“USPTO”) on August 3, 2006. Complainant also claimed a March 1, 2005, date of first use in commerce; however, the Panel found that Complainant did not allege or prove common law rights in the mark prior to Respondent’s registration of the mark with the USPTO on June 5, 2006. The Panel found Complainant had failed to establish bad faith registration and use pursuant to Policy ¶ 4(b)(iii), and therefore, the Panel declined to transfer the disputed domain name to Complainant.Caris Ltd. v. Texas Int’l Prop. Assocs., FA 1234694 (Nat. Arb. Forum Jan. 6, 2009).

Ashley Furniture Industries, Inc. v. Zournas

Complainant, Ashley Furniture Industries Inc., brought a UDRP claim against Respondent for the <ashley.biz> domain name. The Panel found Complainant had rights in its ASHLEY mark, which was identical to Respondent’s <ashley.biz> domain name under Policy ¶ 4(a)(i). Respondent alleged that “Ashley” is a common and generic term or name. The Panel found, however, that Respondent did not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) because Respondent was not commonly known by the disputed domain name, and because of Respondent’s competing use. The Panel also found that Respondent had registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). Respondent had also raised the issues of doctrine of laches and reverse domain name hijacking, but the Panel found that the doctrine of laches was not applicable under the Policy and that since Complainant had satisfied Policy ¶ 4(a)(i), there was no reverse domain name hijacking. Therefore, the Panel transferred the disputed domain name.Ashley Furniture Indus. Inc. v. Zournas, FA 1235340 (Nat. Arb. Forum Jan. 20, 2009).

Radisson Hotels International, Inc. v. Gleb

Complainant, Radisson Hotels International, brought a UDRP claim against Respondent for the <radissonescort.com> domain name. The Panel found Complainant had established rights in its RADISSON mark, and that the disputed domain name was confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). Respondent contended her real name was “Olga Radisson,” and that she provides escort-dating services. Nevertheless, the Panel found that Respondent had not met the burden of demonstrating rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel also concluded Respondent had engaged in bad faith registration and use under Policy ¶ 4(a)(iii). Therefore, the Panel transferred the disputed domain name to Complainant.Radisson Hotels Int’l Inc. v. Gleb, FA 1233302 (Nat. Arb. Forum Dec. 30, 2008).

Toyota Motor Sales U.S.A. Inc. v. The Car Openers Inc.

Complainant, Toyota Motor Sales U.S.A. Inc., brought a UDRP claim against Respondent for the <lexuskeys.com> domain name. The Panel found Complainant had established sufficient rights in its LEXUS mark, and that the mark and domain name were confusingly similar pursuant to Policy ¶ 4(a)(i). Respondent asserted it used the disputed domain name to sell “genuine and unlicensed keys” to vehicles sold under Complainant’s LEXUS mark, and that it utilized numerous disclaimers on the website to prevent consumer confusion. Nevertheless, the Panel found Respondent’s use of the disputed domain name was evidence that Respondent was not using the disputed domain name in accordance with Policy ¶ 4(a)(ii). Additionally, the Panel found Respondent’s actions evidenced bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Thus, the Panel found Complainant had satisfied the requirements under the Policy, and transferred the disputed domain name. Toyota Motor Sales U.S.A. v. The Car Openers Inc., FA 1233077 (Nat. Arb. Forum Dec. 31, 2008).

Misikko, Inc. v. Freedman

Complainant, Misikko, Inc., brought a UDRP claim against Respondent, Iko Freedman, for the <missiko.com> domain name. Complainant contended it had common law rights in its MISIKKO.COM mark. The Panel found “common law right demonstration requires an evidentiary submission providing, inter alia, indications in respect of length and amount of sales under the mark, nature and extent of advertising, consumer survey and media recognition.” The Panel found that Complainant had not submitted evidence to that effect, and thus had failed to establish common law rights in the MISIKKO.COM mark pursuant to Policy ¶ 4(a)(i). Consequently, the Panel declined to transfer the disputed domain name. Misikko, Inc. v. Freedman, FA 1235081 (Nat. Arb. Forum Jan. 2, 2009).

Podcasting and Copyright: Not Everything Is Up for Grabs

Podcasting has become a way for individuals, businesses, and even educators to deliver more information to the public. In the business context specifically, the use of podcasting makes it much easier for companies to provide information on innovations, business generalities, and other aspects not only of each individual business, but of the industry in general. While podcasting is protected by copyright law, specific aspects of podcasting create unique legal situations. See 17 U.S.C. § 102.

Copyright protection applies to podcasting just as it applies to other original works such as art, music, and writing. For instance, a completely original podcast by a business has copyright protection, meaning it cannot be copied without express permission from the copyright holder, or unless the use of the copyrighted material falls under one of the exceptions. However, using the current business model today, the business or individual is interested in reaching as many consumers as possible, and often uses RSS (“Really Simple Syndication”) feeds. RSS feeds are basically a method of syndicating the material. But does RSS basically give users a license to use the material? Not quite, according to Creative Commons, a nonprofit organization that works with artists and others to make navigating the ins and outs of copyright laws less of a headache. In its own series of podcasts, Creative Commons discusses the limited uses of syndicated material. However, even syndicated material remains controversial, as the Associated Press continues to sue or push to sue blog and online news outlets, such as the Drudge Report, for quoting AP press releases.

Many educators and even businesses (for example, anyone quoting the Associated Press) believe fair use allows the use of any work in podcasting as long as the podcast is for educational purposes, which is woefully short of the real legal doctrine. Educators, specifically, have wide latitude, but they need to understand the limits of that latitude. Under 17 U.S.C § 107, of the Copyright Act, teachers are not liable for infringement if the use of the protected work is for “ teaching (including multiple copies for classroom use).” However, under § 107, in determining whether a use is fair use, the analysis must include the following four factors:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.

Businesses are also using podcasts to educate users as well as market products; therefore, businesses, especially less sophisticated businesses, may assume that its podcast is shielded by the fair use doctrine. If a business does not employ all reasonable precautions to avoid litigation, including determining the limits of fair use, that entity will almost certainly find themselves in trouble. Podcasts can certainly be a valuable tool both in the classroom and in business, but users wishing to implement a program that involves podcasting must be aware of the legal pitfalls before finding themselves in trouble.

Lawmakers Consider Tax Credits for Internet, Wireless Companies

Reuters, January 27, 2009: U.S. lawmakers will consider a plan to give tax credits to Internet and wireless companies that expand high-speed internet to rural areas as part of a broad stimulus package to boost the ailing economy. Senator Rockefeller’s amendment to the $825 billion economic stimulus package proposes to provide a 10 percent tax credit to companies, such as AT&T and Verizon, which build out high-speed Internet to rural and underserved areas, and 20 percent for those willing to expand “next-generation” speed access. Link to full story

Malaysia Mulls ‘ Cyber Court’ to Handle Internet Crimes

AFP, January 5, 2009: Malaysia is considering establishing a ‘cyber court’ to deal with the increasing number of crimes related to the Internet and blogging. Malaysia’s mainstream media is tightly controlled by the government, which has express frustration over its inability to rein in blogs and Internet portals. Media watchdog Reporters Without Border has ranked Malaysia 124 out of 169 on its worldwide press freedom index. Link to full story

Kentucky cannot seize Internet domain names, court says

ComputerWorld, January 22, 2009: In a 2-1 opinion, the Kentucky Court of Appeals ruled that the state does not have the right to seize 141 Internet domain names, all registered outside of Kentucky, that contravene state law. The Kentucky Justice and Public Safety Cabinet sought to shut down the gambling websites to protect state residents from “illegal, unregulated and untaxed industry.” The Court of Appeals decided that a domain name was not in and of itself a gambling device and as such was outside the scope of state law and therefore could not be seized. The state has appealed the decision to Kentucky’s Supreme Court. Link to full story

ICANN Changes Causing Concern Among U.S. Businesses

PCworld.com, January 14, 2009: A number of Internet-based businesses have expressed their support of an agreement between the Internet Corporation for Assigned Names and Numbers (“ICANN”) and the U.S. Government to continue joint governance over the Internet. The original ten-year agreement is set to expire in September, and many other countries have been calling for ICANN to be more international in its policies. Many U.S. businesses are worried that this increased interest by other countries will cause ICANN to be split into two domain name systems, each overseeing a different set of domain names. Link to Full Story

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