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Your Source for Domain Dispute
News and Information |
November 14,
2008,
Vol. 9 No. 11 |
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
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In This Issue
Gnarls Barkley, L.L.C. v. Pax Stereo
Are Ad Providers Legitimately Profiting from Typosquatting?
Nominet Launches New Domain Name Business Resource
Palin, Obama Lead in Election-related Spam
Recent
Decisions
Peter Geraci v. Bruce Kane
Complainant, Peter Geraci, brought a UDRP claim against
Respondent, Bruce Kane, for the <infotap.com> domain name.
Complainant applied for, but had not obtained a federal registration for his
INFO TAPES mark. Respondent contended he registered the disputed domain
name in connection with his development of a portal search engine and at the
time was unaware of Complainant’s mark. The Panel found Respondent had not
registered or used the disputed domain name in bad faith pursuant to Policy
¶ 4(b)(iii), because there was no evidence Respondent had actual or
constructive notice of Complainant’s INFO TAPES mark when he registered the
disputed domain name. Because Complainant failed to satisfy Policy ¶
4(a)(iii), the Panel refused to analyze the other elements of the Policy.
Thus, the Panel declined to transfer the disputed domain name to
Complainant.
Geraci v. Kane, FA 1222742 (Nat. Arb. Forum Oct. 16, 2008).
Gnarls Barkley, L.L.C. v. Pax Stereo
Complainant, Gnarls
Barkley, L.L.C., the management organization for the world famous Gnarls
Barkley group, sought relief against Respondent for its registration and use
of the <gnarlsbarkley.tv> domain name. Respondent contended that it
was an affiliate of Amazon.com and stated that it had registered over
three-hundred artists’ names followed by the top-level domain “.tv” for the
purpose of initiating an online “Internet Television Network.” Respondent
conceded that it registered the artists’ names in order to attain leverage
for persuading the artists to sign with their network. The Panel found that
Respondent clearly did not have Complainant’s permission to use its name in
violation of Policy ¶ 4(a)(ii). Moreover, the Panel found that Respondent
used Complainant’s mark, for commercial purposes, knowing that the confusion
engendered by the disputed domain name would likely benefit Respondent
financially under Policy ¶ 4(b)(iv). This resulted in the Panel ordering
the transfer of the <gnarlsbarkley.tv> domain name to Complainant.
Gnarls
Barkley, L.L.C. v. Pax Stereo, FA 1221421 (Nat. Arb. Forum Oct. 12,
2008).
Town of Easton,
Connecticut v. Lightning PC Inc.
Complainant, Town of
Easton, Connecticut, brought this UDRP claim for the <eastonct.org>
domain name. The Panel disregarded Respondent’s Response because it was
filed late and Respondent “did not justify its late-filed Response.”
Complainant claimed a service mark in the EASTON CT mark, which both parties
stipulated to. Complainant even demonstrated a State of Connecticut service
mark registration of the EASTONCT.ORG mark. However, the Panel found that
Complainant could not establish rights in the EASTON CT mark under Policy ¶
4(a)(i) because geographic terms cannot be registered as a trademark or
service mark when they solely relate to the areas in which they serve. The
<eastonct.org> domain name was being used only to disseminate
information and services related to the Town of Easton. For this reason,
the Panel found the mark to be purely descriptive and not a trademark
protected under the policy. Therefore, the Panel declined to transfer the
<eastonct.org> domain name domain name.
Town of Easton Conn. v. Lightning PC Inc., FA 1220202 (Nat. Arb.
Forum, Oct. 12, 2008).
NAOP LLC v. Name
Administration Inc. (BVI)
Complainant, NAOP LLC,
brought a UDRP Complaint against Respondent, Name Administration Inc., in
regards to the <jumppro.com> domain name. Complainant claimed rights
in the JUMPRO mark, stating its own first use in commerce of the mark to
have been April 24, 2003. Respondent stated that it was in the business of
acquiring domain names that contain common terms, such as “jump” and “pro,”
and registered the disputed domain name in late 2004. However, Complainant
did not provide any evidence of its rights beyond its bald assertions.
Consequently, the Panel refused to find that Complainant has established
rights in the JUMPRO mark at the time that Respondent registered the
disputed domain name. Accordingly, the Panel denied the transfer of the
disputed domain name.
NAOP LLC v. Name Admin. Inc. (BVI), FA 1220825 (Nat. Arb. Forum Oct.
7, 2008).
Private Communities Registry, Inc. v. Himalaya
Rankings LLC and John Sweeney
Complainant, Private Communities Registry, Inc.,
brought a UDRP claim against Respondent, Himalaya Rankings LLC and John
Sweeney, for multiple disputed domain names on August 19, 2008. On
September 5, 2008, Respondent filed a petition to cancel Complainant’s
trademarks before the United States Patent and Trademark Office (“USPTO”).
Respondent then argued that the UDRP proceedings should be stayed pending
the outcome of the USPTO proceedings. The Panel referenced Rule 18(a) which
gives the Panel discretion to suspend or terminate in the event that other
legal proceedings are initiated during the pendency of the UDRP
proceedings. The Panel then found that Rule 18(a) does not apply because
Respondent’s petition to cancel Complainant’s trademarks before the USPTO is
not a legal proceeding concerning a “domain-name dispute that is the subject
of the complaint.” Thus the Panel proceeded to a decision, found
Complainant had satisfied the requirements under the Policy and transferred
the disputed domain names. Private
Cmtys. Registry, Inc. v. Himalaya Rankings LLC, FA 1220432 (Nat. Arb.
Forum Oct. 23, 2008).
E-PRACTICE
Are Ad Providers
Legitimately Profiting from Typosquatting?
Benjamin Edelman, an assistant
professor at the Harvard Business School, claims in a report that Google has
been profiting from advertisements placed on websites that correspond to a
typosquatted domain name. Professor Edelman, who is also a participating
attorney for the plaintiffs in a class action suit,
Vulcan Golf, LLC v. Google,
estimates that Google charges
every advertiser between $32 and $50 a year by placing its
AdSense ads on an estimated 1
million typosquatted sites. Users who are redirected to the typosquatted
sites click on these ads and generate revenue for both the domain name owner
and Google. Plaintiffs in the lawsuit include American trademark
holders targeted by typosquatters. The lawsuit names as defendants not only
Google, but several other large typosquatting ad providers as well.
A larger issue is that Google offers a special version of
AdSense, named “AdSense
for Domains,” which specifically targets
parked domain names.
If Google
loses, it could be held liable for assisting typosquatters in
violating the
Anticybersquatting Consumer Protection Act
(“ACPA”). In 1999, the
ACPA made typosquatting illegal
in the United States.
Typosquatting is a practice that
takes advantage of the mistyping of a domain name into a web browser. In
a 2002 case decided under the Uniform Domain Name Dispute Resolution Process
(“UDRP”), the panel further described typosquatting as “tak[ing]
advantage of common typing errors in order to divert Internet users
unwittingly to for profit websites unassociated with the business or entity
the Internet user was attempting to reach.”
Samsung Elecs. Am., Inc. v. Photo Center, FA 122206 (Nat. Arb.
Forum Oct. 17, 2002). This use of another’s trademark is
illegitimate because the typosquatter obtains a windfall by usurping the
goodwill associated with the trademark. Additionally, this practice creates
the impression that the business the Internet user intended to reach is
affiliated with the alternative website when in fact it is not. The panel
in Samsung accordingly found that typosquatting evidenced bad
faith registration and use on the respondent’s part. The
ads on these alternative websites are provided by other companies, such as
Google, and are the point of
contention in the recent lawsuit filed against Google.
The result
of this suit could have a substantial impact on the practice of
typosquatting with regards to third party ad suppliers. A decision against
Google may force third-party ad suppliers to tighten up their current client
roster and implement new research and clearance steps designed to limit
trademark infringement into the process of obtaining new patrons. Thus,
the
advertising generated monetary incentive
to create a typosquatted site would likely decrease, which in turn could
decrease the number of typosquatted sites. However, Google attorney
Maria Moran says, “[Google] has no way to know --
and no reason to know -- whether a given domain in the [AdSense for Domains]
program could infringe a valid trademark… And even if Google did somehow
have the ability to pluck out those domains which could infringe a valid
trademark, Google has no way to know who has registered the domain, be it an
infringer, a licensee of the trademark owner or the trademark owner
itself.” From Google’s point of view, third-party ad
suppliers are merely distributors that cannot be held responsible for
knowing what is and isn’t a valid trademark (let alone who the trademark
belongs to). Forcing the obligation of requiring such knowledge onto ad
suppliers like Google,
Yahoo! and
Sedo may be seen as burdening the
inappropriate party.
Both sides present
legitimate arguments. For
Edelman and the plaintiffs, “[t]he
law simply says, ‘do not typo-squat. Do not register, traffic in or use
infringing domain names or confusingly similar names of trademarks."
Inducing or assisting someone in breaking the ACPA is simply not acceptable.
However, requiring what may amount to be full trademark searches before
third-party ad suppliers can work with websites, which are relatively
inexpensive to register, may be
too overly burdensome to be realistic for the market. Whatever the outcome
of this case, it will have to balance the competing demands of both the
e-commerce market and the trademark owner’s rights.
In The News
Cybercrimes on the Rise
Cnet.com, October 15, 2008: The Federal Bureau
of Investigation (“FBI”) reported that the threats of cybersecurity attacks
are on the rise from organized crime, terrorists, and foreign governments.
The attempted attacks on U.S. networks are "increasingly sophisticated" and
"the amount of information that has been stolen is significant," said Shawn
Henry, assistant director of the FBI cyber division. Henry stated that
infiltrations and electronic surveillance of illegal activity are preferred
over taking reactive action against cybercrime because it creates the
"opportunity to ultimately dismantle the organization" at fault.
Link to Full Story
Nominet
Launches New Domain Name Business Resource
DomainNews.com, October 23, 2008: Nominet, the
registry for .co.uk, in attempts to help businesses protect their domain
names has launched the new resource
www.keepyour.co.uk. This resource will educate companies on the “how,
why and when they need to renew their domain names.” The reason behind the
push for education is that in the next two years, over 140,000 .co.uk
domains will be re-registered in less than 10 seconds after becoming
available. This highlights the imperative that businesses renew their
domain names before others can take it. The resource is mainly directed at
smaller businesses that are less savvy about domain name issues.
Link to Full Story
Palin, Obama Lead in
Election-related Spam
Cnet.com, October 6, 2008: In a report
published by PC Magazine, the reported amount of spam mentioning Senator
Barack Obama beat out the amount of spam mentioning Senator John McCain by a
6 to 1 ratio. Likewise, spam mentioning Governor Sarah Palin beat out
mentions of Senator Joe Biden by a 6 to 1 ratio. The report outlines that
spammers like to use popular Internet searched names in order to produce
spam. Though most of the content contained in the spam messages is
nonsensical, some of the messages contain current issues that are intended
to entice Internet users to click on them.
Link to Full Story
Harvard Professor Sues Google
The Harvard Crimson, October 17, 2008: Harvard
Business School professor Benjamin G. Edelman has filed a class action suit
against Google for supplying advertisements on “typosquatting” websites.
“Typosquatting” creates domain names that are misspellings of well-known
trade names. The website either redirects the user to the typosquatter’s
webpage or the site is a landing page with multiple click-through links to
competitors of the trade name or other services. Edelman conservatively
estimates that by supplying these ads to typosquatters, Google generates up
to 50 million dollars of gross revenue. Plaintiffs in the lawsuit are any
American trademark holder targeted by typosquatters. The lawsuit names as
defendants not only Google but several large typosquatting companies as
well.
Link to Full Story
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