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In
This Issue
Sears
Brands, LLC v. Zarooni
ICANN
Paves the Way for Virtual Redlight District
Not
Much to Do in Kids’ Online Domain
Recent
Decisions
Wells
Fargo & Co. v. Doe
Respondent
registered the <wellsfargossl.com> domain name and used it to direct
Internet users to a website that featured a replica of Complainant’s
website customer log-in page. The
website was used to trick unassuming Wells Fargo customers into providing
valuable personal and financial information, a scam that is commonly known
as “phishing.” The Panel
found that Respondent’s domain name was confusingly similar to
Complainant’s WELLS FARGO mark and that Respondent had engaged in
cybersquatting. Therefore, the
Panel ordered Respondent to transfer the domain name registration to
Complainant. Wells
Fargo & Co. v. Doe, FA 453727 (Nat. Arb. Forum May 19, 2005)
Superior
Growers Supply, Inc. v. Strobel
Complainant
holds the registration for the SUPERIOR GROWERS SUPPLY and SGS marks.
Respondent asserted that it registered the <superiorgrower.com>
domain name to provide a question and answer site for gardeners and the
<sgs-hydroponics.com> domain name for selling specially designed
hydroponic systems. Respondent
also argued that its choice of domain names demonstrated its lack of bad
faith. It stated that “if
[its] goal was to infringe on [Complainant’s] trademark” it would have
purchased <sgshydroponic.com> or <superiorgrowerssupply.com>,
both of which were available for purchase at the time of the Response.
The Panel disagreed, and Respondent’s argument backfired:
“Respondent actually did purchase domain names strikingly similar to the
ones that he concedes would be evidence of the ‘goal’ of
infringement.” Following
Respondent’s logic, the Panel concluded that the disputed domain names
were similar to Complainant’s marks and, therefore, were registered in bad
faith. Superior
Growers Supply, Inc. v. Strobel, FA 452438 (Nat. Arb. Forum May 22,
2005)
Sears
Brands, LLC v. Zarooni
Respondent
registered the <searstower.net> domain name and used it to direct
Internet users to an adult-oriented website that provided a chat platform
called “Visit-X.” Complainant
filed a complaint asserting that the domain name was identical to its SEARS
TOWER mark and that Respondent had engaged in cybersquatting.
The Panel found that Complainant had rights in the mark and that
Respondent was using the domain name to take advantage of the goodwill
associated with Complainant’s mark. Therefore,
the Panel found that all elements of the Policy had been satisfied and
ordered Respondent to transfer the domain name registration.
Sears
Brands, LLC v. Zarooni, FA 465281 (Nat. Arb. Forum June 2, 2005)
Am.
Eagle Outfitters, Inc. v. Covanta Corp.
Complainant
filed a complaint asserting that Respondent’s
<americaneaglestore.com> domain name was confusingly similar to
Complainant’s AMERICAN EAGLE OUTFITTERS mark and that Respondent had
engaged in cybersquatting. Respondent
contended that the term “American Eagle” was not distinctive of
Complainant apart from the entire mark, AMERICAN EAGLE OUTFITTERS, and that
Respondent was entitled to use the domain name to provide commercial links
to locations where visitors could purchase American Eagle coins and
merchandise relating to wild birds. In
finding for Respondent, the Panel stated, “Complainant has failed to
establish exclusive rights in the words ‘American Eagle’ apart from
Complainant’s mark AMERICAN EAGLE OUTFITTERS for the purposes of
satisfying Paragraph 4(a)(i) of the Policy.”
Am.
Eagle Outfitters, Inc. v. Covanta Corp., FA 465210 (Nat. Arb. Forum
June 3, 2005)
V
Secret Catalogue, Inc. v. Click Search
Victoria’s
Secret, the well-known women’s lingerie and beauty products company, has
its share of admirers. This time, Victoria’s Secret took its courtier to a UDRP
Panel. Respondent registered
the <victoriassecet.com> domain name and referred its
traffic to Adult Friend Finder, “an adult-oriented website which bills
itself as ‘The World’s Largest SEX and SWINGER Personals site.’” The Panel took notice of Victoria Secret’s fame and found
that Respondent’s efforts to use the domain name for benefit exhibited bad
faith. V
Secret Catalogue, Inc. v. Click Search, FA 467053 (Nat. Arb. Forum
May 31, 2005)
Dell
Inc. v. Innervision Web Solutions
Dell
Inc. commenced this action against Innervision Web Solutions, the registrant
of the <dellcomputerssuck.com> domain name, claiming that Respondent
did not have rights or legitimate interests in the domain name because of
Respondent's initial commercial use and subsequent use of the domain name as
a non-commercial "gripe site."
Respondent filed a Response claiming that he was making a legitimate,
noncommercial and fair use of the domain name to express criticism and
commentary pursuant to his First Amendment right to free speech.
The Panel found that Respondent's initial use of the domain name to
redirect Internet users to his commercial website until he received the
cease and desist letter from Complainant demonstrated that he was not making
a legitimate noncommercial or fair use of the domain name and, therefore,
his use did not qualify under Policy 4(c)(iii).
Dell
Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb.
Forum May 23, 2005).
E-Practice
ICANN
Paves the Way for Virtual Red Light District
E-Commerce
Times reports that ICANN has recently approved
the addition and implementation of the top-level domain “.xxx,” intended
for adult websites over the Internet. The
“.xxx” domain will be the third new industry specific domain approved
this year, alongside “.jobs” and “.travel.”
The decision to approve the “.xxx” domain comes five years after
the idea was initially suggested.
Sexually
explicit websites will be encouraged to move to the new domain, making it
easier for people to filter and avoid them.
However, these websites will not be required to move to the new
domain. A
spokesperson from ICANN was quoted in a media
report as saying, "This will help protect children from exposure to
online pornography and also have a positive impact on online adult
entertainment through voluntary efforts of the industry."
“The
.XXX domain does nothing to alter existing pornography laws. But those
operating .XXX domains will be forbidden from using ‘misleading domain
names or domain names intended to attract child-pornography consumers,’
among other deceptive and disreputable business practices.” (InformationWeek).
In
response, the Family Research Council issued the following
statement expressing strong opposition to the new domain: "The
new domain would do more harm than good. The '.com' domain has been a cash
cow for the porn industry and pornographers will not give it up and remove
themselves to the '.xxx' domain. Instead, they will populate the '.xxx'
domain and perhaps double the number of porn sites available on the Web.”
The
“.xxx” domain may be available as early as fall or winter and will be
offered exclusively through a single registrar, ICM Registry Inc. (EarthTimes.org)
In
The News
Court
Hears Argument Over Falwell Web Domain Name
ABC
News (May
26, 2005) A Web site critical of the Rev. Jerry Falwell's
views on gays contains constitutionally protected, noncommercial speech and
should be allowed to keep its name, a common misspelling for the
conservative evangelist, a lawyer for the site owner argued Thursday.
Christopher
Lamparello of New York City, who operates fallwell.com, took his case to the
4th U.S. Circuit Court of Appeals seeking to reverse a federal judge's
ruling that he violated federal trademark law.
A
lawyer for Falwell maintained Lamparello's use of a variation of the
preacher's name bordered on theft. "It's been wrong to steal since
Moses came down from the mountain," attorney John H. Midlen Jr.
said.
A
federal judge ruled last August the domain name was nearly identical to
Falwell's Web site falwell.com and could confuse Web surfers despite a
disclaimer noting it is not affiliated with Falwell.
Freeman
Wins Cybersquatter Battle
BBC
News (May 11, 2005) Oscar-winning
actor Morgan Freeman has won the rights to the internet domain name www.morganfreeman.com.
A
United Nations [sic] arbitration panel ordered the transfer to the
Oscar-winning star, after he complained it was being misused.
Freeman,
67, complained the name - registered by the company Mighty LLC - was being
used to divert internet traffic to a commercial search engine.
The
actor argued that it suggested he had authorized or sponsored the
site.
Upholding
the ruling, arbitrator Peter Nitter said the company - which offered no
response to the actor's complaint - was using the domain name "for its
commercial benefit to lure internet users to its website".
Independent
Inventor Secures Landmark Search Engine Patent
Yahoo
News (May 17, 2005) As search engine patent
wars have escalated, an independent inventor from Ohio has been advancing
the state of the art and filing dozens of patent applications since 1999
regarding his discoveries and technologies.
Earlier today the U.S. Patent and Trademark Office issued U.S. Patent
No. 6,895,430 (the ‘430 patent) to Eric Schneider, an Ohio inventor, for a
Method and Apparatus for Integrating Resolution Services, Registration
Services and Search Services, making it the sixth patent of a growing
portfolio of Internet-related patents received by Schneider.
According
to Schneider, “The burden has been on the individual to first visit a
domain name registration services and initiate a request to find available
domain names. The patent
portfolio changes this by providing protection of core technologies
developed to assist users with determining domain name availability in
response to the initiation of request types other than that of a
registration request or availability request.”
For
example, one aspect of the ‘430 patent specifies receiving keyword input
for a search engine and, in response, providing both search engine results
of Web pages, and in addition, providing one or more domain names that may
be available for registration relating to those keywords.
According
to Chris Varley, Associate Director of NorTech, the Northeast Ohio
Technology Coalition, “After trying it, I have found Mr. Schneider’s
technology promising and can immediately see how its use saves steps making
it easier to find available domain names while at the same time adding value
to search engine results.”
Domain
Name Speculators See Triple-Digit Returns
FinanceVisor
(June 8, 2005) An analysis of domain names that have been resold in the
secondary domain name aftermarket since 1996 reveals a average return on
investment of 377 percent with the average name being bought and resold in
12.5 months.
"These numbers uncover a golden nugget we always knew was there –
there’s lots of money to be made in domain names," Zetetic Analyst
Keith Pieper said. "Several people have made million dollar fortunes
reselling domain names, but you don’t need millions to speculate in this
market."
Zetetic culled its exclusive resale transaction database of over 8,000
domain name secondary market transactions collected from dozens of sources
since 1996. They identified and analyzed 74 domain names that had been
resold in the secondary market at least once during that period.
The median buy price for a domain name was US$891, which was resold within
8.8 months for US$1,450, resulting in a 83 percent return on investment
while the average sale saw 377 percent ROI from an original acquisition
price of US$7,493 to sale of US$127,115. The longest holding period before
reselling was 4.1 years.
Not
Much To Do in Kids’ Online Domain
News.com
(June 3, 2005) There’s not much for kids to do in the “online
playground” set up by the U.S. government more than two years ago.
They
can go bowling with SpongeBob Squarepants at Nick.kids.us, plunk a piano
keyboard at Music.kids.us, and learn about mummies at Mummies.kids.us.
There are fun facts about the solar systems at Space.kids.us and
motorcycles at Knex.kids.us.
Beyond
that there are only sixteen more Web sites in the kids.us Internet domain, a
letdown to those who had hoped that it would host enough material so that
kids wouldn’t have to navigate the unprotected wilds of the Internet at
large.
“It’s
disappointing; I wish it was fully deployed,” said Illinois Republican
Rep. John Shimkus, who sponsored the bill that set up the domain in 2002.
Domain
Names Near 77M
San
Jose Business Journal (June 7, 2005)
Be it a dot-com, a dot-net or a dot something, the number of Internet domain
names is speeding toward 77 million, according to a report from Verisign
Inc., the Mountain View-based domain name registration company.
In
all, worldwide domain name registrations reached a record high of 76.9
million domain names in the first quarter of 2005. That represents 8 percent
growth over the fourth quarter of 2004 and a 22 percent increase over the
first quarter of 2004, says Verisign.
According
to the company, over 6.7 million new domain names were registered in all
"top level domains" during the first quarter of 2005, marking the
highest increase in domain name growth to date.
Key
factors contributing to the growth of new domain name registrations include
a strengthening global economy, increasing numbers of regular Internet users
and the continued growth in online advertising, according to VeriSign.
Samsung
Registers 470 .CN Domains in 2005 to Protect Against Domain Name Hijackers
Interfax
China (May 25, 2005) Samsung has
registered more than 470 .CN internet domain names during 2005 in an attempt
to protect the company from domain name hijackers, a Marketing Manager with
CNNIC (China Internet Network Information Center), which administrates the
registration of .CN domain names, said.
"Registering
these .CN domain names is actually a way for Samsung to protect its brand.
It will help protect against the misuse of the company's brand in .CN domain
names," the CNNIC official, who wished to remain anonymous, told Interfax.
"Because Samsung is a multinational company, domain names have become
one of the company's most important brand management strategies."
Multinationals
such as BMW, L'Oreal and Coca-cola have all been victims of .CN domain name
hijacking. In one recent example, Google was forced to pay $1 million to buy
the rights to the <www.google.com.cn> domain name. As a result, many
multinationals have begun to protect themselves by registering a number of
variations of different .CN domain names, including Panasonic and
Volkswagen, in addition to Samsung. Germany's Deutscher Telekom has even
registered more than 100 different .CN domain names even though the company
has no business operations in China at present, the CNNIC official said.
Air
France Wins ‘Sucks’ Domain Name
The
Register (June 8, 2005) The domain
name AirFranceSucks.com will be transferred to Air France. But the airline's
victory at arbitration was not without controversy: panelists disagreed
about what the word 'sucks' really means to internet users.
The
name was registered by Florida-based Virtual Dates Inc. in 1999. It was only
in February 2005 that Air France took a claim before the World Intellectual
Property Organization (WIPO), alleging cybersquatting. The decision was made
on 24th May and published today.
For
most of the past six years, Virtual Dates pointed the domain name at a page
of ePinions.com, an ad-supported site that rates and invites reader comments
on everything from movies and barbecues to office supplies and zoos.
Virtual
Dates said AirFranceSucks.com was a freedom of expression site for the
registration of complaints or recommendations about the airline. Air France
said it was just trying to cash-in on its trademark: this was a commercial
entity, not the gripe site of an aggrieved customer.
Decisions
on 'sucks' sites have gone both ways trade mark owners in the past. But the
current panel's majority view on their similarity to a trade mark is
supported by a WIPO report on trends in domain name dispute decisions,
published in March. On 'sucks' sites, it agreed that non-fluent English
speakers would fail to recognize the negative connotations of the word.
Upcoming
events
| June
13-24, 2005 |
INTA
presents its Trademark Development and Prosecution: USPTO Website
Resources and Tips in various US cities. |
| June
22-26, 2005 |
ABA
offers its 2005 Summer Intellectual Property Law Conference in San
Francisco, CA. |
| June
30, 2005 |
Practicing
Law Institute presents "Advanced
Seminar on Trademark Law 2005," New York, NY |
| July
11-15, 2005 |
ICANN
Conference in Luxembourg City, Luxembourg |
| July
25-26, 2005 |
Practicing
Law Institute presents “Understanding Basic Copyright Law &
Understanding Basic Trademark Law (Combo) 2005” in San Francisco, CA |
| August
4-9, 2005 |
American
Bar Association offers its 2005 Annual Meeting in Chicago, IL. |
Let
the National
Arbitration Forum know of
your upcoming events for listing in DomainNews. Send event listing
information to: domain-news@arb-forum.com.
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