Your Source for Domain Dispute News and Information	May 2009, Vol. 10 No. 05

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Clinton v. Web of Deception  

Google Reverses Policy on Trademarks in Ads

Microsoft Offers Free Anti-Virus Software

Obama to Create “Cyber Czar”

EarPeace Technologies Inc. v. Neal

> Complainant, EarPeace Technologies Inc., brought a UDRP claim against Respondent for the <livewiresforyou.com> domain name.  Complainant is in the hearing aid industry.  Respondent had been an authorized dealer of Complainant’s custom-fit earphones and was responsible for designing and maintaining the <livewiresforyou.com> domain name.  Respondent separated itself from Complainant and re-registered the domain name for its competing corporation.  The disputed domain name contained the message, “As always, In Ear Systems, Inc. will continue to provide the exceptional products and customer service that you have come to know and appreciate.”  Complainant contended that this message was an admission that Respondent did not have rights in the LIVEWIRES mark.  Respondent alleged that it was a co-developer of the product and that its domain name pre-dated Complainant’s registration of the LIVEWIRES mark with the USPTO.  The Panel found that this situation was a business or contractual dispute between two companies that fell outside the scope of the Policy.  Therefore, the Panel denied relief.  EarPeace Techs. Inc. v. Neal, FA 1261524 (Nat. Arb. Forum June 23, 2009). 

N.V. Organon and Schering Plough Corp. v. Fields Law Firm and Stephen Fields

Complainant, N.V. Organon and Schering Plough Corporation, brought a UDRP claim against Respondent for the <nuvaringsideeffects.com> domain name.  Complainant markets birth control products under its NUVARING mark.  Respondent was using the disputed domain name to list potential side effects of Complainant's products, pending legal proceedings against Complainant in relation to the NUVARING product, and potential legal remedies for consumers adversely affected by Complainant's NUVARING product.  Respondent asserted that its use of the disputed domain name was a nominative fair use.  The Panel agreed, finding that Respondent was making a nominative fair use, and that the term "side effects" sufficiently alleviated any potential initial interest confusion.  Furthermore, the Panel found that Respondent's use of a disclaimer on the website resolving from the disputed domain name further alleviated initial interest confusion.  Thus, the Panel found that Respondent has established rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and declined to transfer the disputed domain name to Complainant.  N.V. Organon v. Fields Law Firm, FA 1259266 (Nat. Arb. Forum June 16, 2009).

Cameron Diaz v. Network Operations Center c/o Alberta Hot Rods

Complainant, Cameron Diaz, brought a UDRP claim against Respondent for the <camerondiaz.com> domain name.  Respondent failed to respond to the Complaint.  The Panel found that Complainant had established common law rights in the CAMERON DIAZ mark because of Complainant’s fame and repute as an actress.  Furthermore, the Panel found that Respondent had no rights or legitimate interests in the disputed domain name.  Respondent was using the disputed domain name to resolve to an adult-oriented website, which the Panel found was an attempt to profit from and tarnish Complainant’s reputation.  Thus, the Panel found bad faith registration and use under Policy ¶ 4(a)(iii).  Therefore, the Panel transferred the disputed domain name to Complainant. Diaz v. Network Operations Ctr., FA 1259470 (Nat. Arb. Forum June 17, 2009).
           
Smith Travel Research, Inc. v. An

Complainant, Smith Travel Research, Inc., brought a UDRP claim against Respondent for the <str.com> domain name.  Complainant provided evidence of its registration of the STR mark, and asserted that Respondent was using the identical disputed domain name to operate a competing travel services website.  Respondent contended that "STR" was a popular abbreviation used by many businesses, and registered by many entities.  The Panel found for Complainant under all three UDRP elements, including bad faith.  Although it did note that “the three-letter combination in Complainant's mark is used in other contexts and by other businesses,” it nevertheless concluded that “given Complainant's notoriety in the travel business, it seems clear that it was no accident that Respondent chose the same three letters for its domain name in an attempt to attract users familiar with Complainant's travel industry expertise."  Therefore, the Panel transferred the disputed domain name.  Smith Travel Research, Inc. v. An, FA 1259999 (Nat. Arb. Forum June 15, 2009).

Google Reverses Course with its Policy on the Use of Trademarks in Advertisements

A recent move by Google to relax trademark use in advertisements will likely cause a stir.  On May 14, 2009, Google reversed course in its trademark policy by announcing that, starting June 11, 2009, it would allow certain companies, including resellers, to purchase advertisements with trademarks in the text of the advertisement, even trademarks that those companies do not own.  Previously, only the rightful trademark owner could purchase advertisements with trademarks in the text. 

Google says that this shift in policy will allow users to make more targeted advertisements and highlight certain products in those advertisements.  It specifically argues that this change will allow resellers to use the brand names of the products that they sell.  Google likens its old policy to a grocery store advertisement in the newspaper that could not name the advertised products by name, but could only mention them generically.  The new policy, in contrast, will allow department stores, for example, to name the designer labels it carries in the advertisement.  This policy, Google argues, will bring it in line with the rest of the industry.  However, this shift in policy does not come without an increased cost to Google’s customers.

Google utilizes an auction process to distribute these advertisements, and now that the advertisements can contain trademarks, companies wanting to protect their brand will be forced to bid on those advertisements to make sure their legitimate advertisements appear.  Google’s auction process combines the maximum price a willing bidder will pay with an “ad quality score.”  Before, no advertisements could contain trademarks, forcing users to generically describe the products featured in the advertisements.  Now, with the addition of trademarks in those advertisements, the “ad quality score” will most likely increase, thereby increasing the winning bid price as a whole. 

This latest move by Google comes soon after it was hit with another lawsuit regarding keywords.  Recently, Firepond, Inc. filed suit in Texas over Google’s use of trademarks in keyword advertising.  This new Firepond suit is similar to another suit against Google brought by Rescuecom, a computer support company.  The complaints in both the Firepond and Rescuecom cases argue that Google should not be able to auction off their respective trademarks to others, namely competitors, for the competitors’ own use in the appearance of their advertisements.  For example, Burger King would be able to purchase the keyword “McDonald’s” so that whenever an Internet user would search for McDonald’s, Burger King’s advertisement would then appear next to the search result.  The Rescuecom case was initially dismissed in 2006 in favor of Google because the court there determined that there was no trademark “use in commerce” within the meaning of the Lanham Act, in order to have a cause of action for trademark infringement.  The case was recently revived in April of this year, with a reversal of the 2006 decision by the Second Circuit Court of Appeals.

For the moment, it appears that Google may become an even bigger target of the frustration of trademark owners.  The policy shift, taken together with the recent revival of the Rescuecom case, could give trademark owners an upper hand should they drag Google into court in the future.  But Google, in targeting a limited category, namely resellers, with their relaxed trademark policy, may have a defense by claiming that the advertisers’ uses are merely nominative.  While these scenarios remain to be seen, interest in Google and the recently filed Firepond case will surely increase.           

Microsoft Offers Free Anti-Virus Software

BBC, June 24, 2009: 75,000 trial versions of Microsoft Security Essentials (MSE), Microsoft’s new free anti-virus software, are being made available in the US, China, Brazil, and Israel.  Microsoft plans to have the security software, which offers basic protection against viruses, trojans, rootkits, and spyware, available as a free download from its website.  Microsoft has long been absent from the cyber-security industry.  Established cyber-security companies were quick to question Microsoft’s ability to provide complete protection for consumers.  Security firm Symantec said that calling MSE “essential” is misleading because it should only play one part of a comprehensive security plan.  Microsoft is hoping the free software will prove popular, and is planning a full roll-out later this year.  Link to full story

Online Businesses Oppose “10 Worst” Proposed Net Laws

SiliconValley.com, June 9, 2009: NetChoice, a group backed by companies such as AOL and eBay, launched a campaign against proposed Internet laws.  Laws on the list include online sales taxes, rules for social networking sites, and new encryption requirements.  Named “iAwful” (Internet Advocates’ Watchlist for Ugly Laws) the list hopes to motivate activism to change or stop the proposed bills.  The list has already had success changing the language of a proposed California measure regarding photos on social networking sites.  Link to full story

President Obama to Create “Cyber Czar”

Foxnews.com, May 28, 2009:  The Obama Administration recently announced that it would create a “Cyber Czar” position to coordinate the nation’s computer security.  This move came on the heels of the much anticipated report to the White House about the state of the United States Internet security.  Government and military officials have acknowledged that U.S. computer networks are constantly attacked at an increasing rate.  It is still unclear as to who will hold the position and what type of powers the Cyber Czar will have, but a number of critics have lauded the move as a step in the correct direction.  Link to Full Story

Canada Introduces Anti-spam Bill

Thestar.com, May 19, 2009:  The Electronic Consumer Protection Act (“ECPA”) passed the first round of the Canadian legislative process.  The anti-spam bill is aimed at addressing almost all Internet-related consumer harms.  These include all forms of spam, spyware, phishing, and other forms of Internet viruses.  If the ECPA is passed into law, it will make it illegal to send a commercial message electronically or download any software to other computers without first obtaining consent to the target recipient.  Thus creating a type of “opt-in” system that would only allow commercial messages to be sent after consent is given.  Link to Full Story

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