ARMOURGAMES.COM Domain Name Dispute Dismissed

In an ICANN WIPO UDRP decision released today, the Complaint brought against the registrant (represented by me) of ARMOURGAMES.COM was dismissed by UDRP Panelist Alistair Payne. The Panelist found, inter alia, that the domain name registrant had a legitimate interest in the domain name because he registered it after conceiving of the domain name, and before the Complainant had used the American spelling, i.e. without the "u", even though the Complainant had registered its domain name a week earlier. The Panelist found that since the Respondent registered the domain name before the Complainant had acquired any trademark rights in its mark/domain name, the Respondent could not have registered the domain name in bad faith:

There is no evidence that the Complainant had made any substantive use of its domain name or of a corresponding trade mark by this stage. At best the Complainant’s first use date is one week prior to the Respondent’s registration of the Disputed Domain Name, but in all likelihood according to the Wayback machine evidence submitted by the Respondent, the Complainant started actively using its domain name or any corresponding trade mark after this time. Certainly the Complainant had no registered trade mark rights at this time and it seems extremely unlikely on the evidence presented that it had any common law rights either.

This case demonstrates how a Panelist properly interepred the ICANN UDRP as it was intended; narrowly, i.e. it is not intended as a broad trademark enforcement mechanism, but merely to catch so-called "cybersquatters".

A copy of the decision is available here.

Salam Toronto! Undefended Trademark Infringement Case Dismissed.

In a remarkable decision by the Federal Court of Canada dated, January 9, 2009, the Honourable Madam Justice Simpson brilliantly dismissed an unmeritorious claim against a domain name owner - even though the domain name owner didn't even defend.

The publisher of a local Toronto Iranian-Canadian newspaper, called Salam Toronto, had brought an action for trademark infringement against the domain name registrant of SALAMTORONTO.COM.

The newspaper publisher operated under the domain names salamtoronto.net and salamtoronto.ca. The publisher also had a registered trademark for SALAM TORONTO in connection with newpaper publication, since February, 2004. the publisher's friend had previously registered the disputed domain name, SALAMTORONTO.COM on the publisher's behalf, but had let it lapse. It was picked up by a "Salam Toronto" Immigration Services.

The Plaintiff publisher brought an action for tradmeark infringement against the domain name owner. The Plaintiff alleged that the domain name, a web site, an automated reply email from the Immigation company, and its letterhead, all "infringed" the Plaintiff's registered trademark.

The Judge efficieintly and correctly dismissed the claim, even though it was undefended, simply because ""Salam Toronto" was an "inherently distinctive trademark" and was therefore "weak". Furthermore, and more importantly, there was  "no confusion" between newspaper publication and immigration services.

This is a fundamental tenet of tradmeark law, where a mark is not particularly famous or distinctive, more than one trader can use the mark, albeit in connection with sufficeintly different wares or services.

Good for the judge and congratulations to the domain name owner!

Domain Name Dispute in Great White North: "A Failure to Communicate"

In an entertaining domain name decision from the Nunavut Court of Justice dated September 10, 2009, the Honourable Mr. Justice E. Johnson, described a domain name dispute as similar to "Cool Hand Luke":

"Stout described the litigation by using a movie analogy. He called it a Runaway Train. I believe a better movie to describe it is Cool Hand Luke. In one scene, the strong-willed prisoner, played by Paul Newman, is lying in a ditch covered with dust and bruises after being recaptured from a prison escape. The warden, played by Strother Martin, looks down at him and says, “What we got here is a failure to communicate.”

The domain name dispute had actually already been resolved between the parties, as the registrant had already agreed to transfer the domain names, but the issue of legal fees remained.

According to the decision, in March 2000, the registrant paid for an online registration of the domain names “NunavutTourism.com”, “NunavutTourism.net”, and “NunavutTourism.org” in her name because the site would not accept her work email and the applicant did not have a credit card, even though she was registering the domain names on behalf of her employer, Nunavut Tourism. After the registrant ended her employment, she offered to transfer the domain names in exchange for her registration costs, but her former employer insisted upon her legal costs.

Various offers were exchanged, however the matter ended up in court after a "failure to communicate" as the Judge said, and the parties then argued about costs. The registrant ended up getting nearly $8,000 in costs because the Plaintiff apparently kept suing when all it needed to do was agree to accept back the domain name and pay nominal costs to the registrant. This is a lesson for overly aggressive and/or unreasonable claimaints.

Facebook Takedowns

I was on Global News (Canadian national tv newscast); interviewed about the recent Facebook take-downs of member pages. You can watch the segment here. Here is an update of the news story...

Interesting Internet legal issue for me considering my recent experience with moderation, as per my below posts.

This is the big issue: Facebook has 300 million members in its "community". Likewise, millions of people are members of other "communities". In tradtional, bricks and mortar communities, governments are supposed to protect member's rights in the "community"; at least in democracies. Has the time come for online communities to employ a "Charter of Rights" for members?

Suggestions for a Code of Practice for Forum Moderators?

Forum Moderators are the often unsung heroes of the Internet world. They often commit themselves to supervising an important forum community for little, or more usually, no pay at all. They keep things humming along, remove bad posts, keep things on topic, enforce the rules, answer questions, and help out users. By and large, forum moderators are indispensable and generous people.

Nevertheless, as pointed out in my earlier post, forum moderators enjoy an often unchecked power to censor. Since forum moderators fulfil such an important role, perhaps there ought to be a Forum Moderator Code of Practice. I checked for such a thing online, and couldnt locate a defintive or comprehensive version, although I did find that people had thought about this issue and some even incorporated such a kind of a code into a handbook for moderators.

As a lawyer, and even before becoming a lawyer, I had a fine sense of fairness. And fairness requires "procedural fairness". Now, what makes forums unique, is that they are private enterprises, by and large, and as such are not required to be "democracies" or accountable to users, except to the extent that it is a good business practice to keep users happy. Nevertheless, forums often serve a public interest and are imbued with a sense of community and membership, and accordingly, there is a prima facie need to employ fair procedures. Of course this is not by any means legally required, and is solely at the option of the Forum owner, but I would argue that good business practices would include procedural fairness, as that is what keeps Forum members happy and returning to the Forum.

And upon reflection, I think that is what is lacking in many forums; procedural fairness. So, I propose a Forum Moderator's Code of Conduct. Let me start off with a preliminary list of elements or principles.I would love to hear from anyone with suggestions.

1. As a general principle, Forum Moderators should strive to not intervene in Forum discussions.

2. Intervenetion by Forum Moderators should occur only when a Forum Rule has been breached and the breach is clear and serious.

3. Rules of the Forum should be clearly set out to all members and Moderators alike.

4. When a breach occurs, it is a best practice to notify the poster and clearly identify the breach to the poster and ask the member to correct and/or edit the posting.

5. If the poster fails or refuses, the Moderator should remove the post permanently, and notify the membership that a posting has been removed and the reason why. This can be done through a sub-forum. A copy of the removed post shouldalso  be sent to the poster so the poster has a copy.

6. Posters who disagree with a decision by a Moderator to remove and/or edit a post, should have recourse to challenge the decision by appealing to a committe of moderators.

7. If the appeal to the moderators fails, the poster should have recourse to appeal to the general membership through a sub-forum.

Forum Moderators Can Be Overzealous

I wonder if anybody has run into what I consider to be amongst the most annoying and disheartening of phenomena on the Internet: Overzealous Forum Moderators.

A couple examples...

One of the two probematic forums that I have come across is Chowhound. Seems like some mods there are on a powertrip, and capriciously and arbitrarily in my opinion, delete posts that people put hard work into. That being said, I think that both forums are productive and full of content and qualified people.

Overzealous moderators are more annoying than a serious problem, because who cares really, at the end of the day, if your post about a restaurant doesn't get read by someone on a forum. Nevertheless, can you imagine sitting down to spend your precious time contributing a written review of a restaurant and having some anonymous overzealous moderator take it down with no explanation?!

Furthermore, the post simply vanishes, so that forum members do not even know that they are members of a cyber Gulag run by Big Brother. Without transparency, the overzealous moderators are unaccountable for their actions to the members.

Here is an example of overzealous behaviour on that forum. Note however, that in this example, I actually did get an explanation after sending a flame to the moderator. I excerpted a quote from a restaurant review and commented on it. The quote was from a magazine and confirmed my own opinion of the particular restaurant, which was provided ont he forum before the magazine article came out. The moderator told me that I was "breaching copyright". Huh? Copyright law allows one to copy another's work for the purpose of criticism, review, and fair comment. I told him that I was a lawyer and am familiar with copyright and he didnt know what he was talking about and even offered my free services in the future, should another issue arise with a post. No response, no thank you.....

But here is a more serious example at WebMasterWorld.com. I joined, paid a $100 fee, and started reading and posting.

My first post was in reply to a guy who was wondering about who might be spidering domain name registrations because he noticed that this was happening. I said it might be domaintools.com which is a leader in the domain name business and charges a lot of money to find out who owns what. This is what they told me:

"The following was removed from your post, per the Charter policy of avoiding member endorsements of specific service providers, tools, etc.: "


This was my post:

"In the domain name business, Domain Tools is one of the leaders, and it crawls and stores all registration information. It offers a service, for a very high price, that allows you to look up what domains are owned by someone, via their email address, as listed in the whois. Could this be what it was?"

I was promoting domaintools? Is this some kind of a joke?

I posted a reply to a guy who had a question about trademark law and domain names. Spent half an hour on it. Was very educational. Removed my post! Not allowed to give "legal advice"....These guys are strange....Their members have questions, an expert is willing to answer them and educate their membership for free, and they don't want any of that on their Forum...

Compare this to Idnforums.com, which invited me to be a member, set up a special section for me to answer legal questions, and everybody thanked me for helping out...

My second post was in response to a guy who had a domain name situation (they have a whole section just on domain names, and most of the questions are legal issues). He asked his question to the forum and was told that he is not allowed to ask about a specific situation. OK, so be it, that makes sense. So I replied that if he or anyone else wants to run something by me, they could do it outside of the Forum, so as to respect its rules. My post was removed. This is what they told me:

"Per the WebmasterWorld TOS and the Domain Forum Charter we don't allow members to use the boards to promote their services/expertise or solicit business, either directly or by suggestion."

Their members have questions, and they dont want them answered either on the Forum or outside the forum! Talk about "terms of service"....No service for members I guess...

There was a post on WebMasterWorld that said that 'cybersquatting was not illegal, just wrong' - and no one corrected him! They obviously could use a little legal information, if not advice...

My third post was also removed. Another wasted half an hour. Apparently it was verboten because it explained the law to someone who didnt know what the law was and that is not allowed. I actually never give "legal advice" on any forum; I just explain the issues and keep it general.

Thanks to a couple of my (now) fellow Bloggers

I wanted to take a moment to profusely thank a couple of my fellow Bloggers who have warmly welcomed me to the "blogosphere" and took the time to link to my blog and say some very nice and generous things about me.

Robert Borhi, author of DomainReport.ca, who I have never met but look forward to meeting. He generously gave me a very nice mention on his web site. I found Robert's blog to include many articles that had information that I was not aware of and found very useful and interesting. I will be visiting often.

Jeffrey Behrendt, author of DomainBits.com, is someone who has always been very supportive and appreciate of my work in domain name law, and wrote some exceptionally kind, thoughtful, and encouraging words of welcome to me and my new blog. Jeffrey is an excellent reporter who does this ingenious thing where he interviews people by email and gets great content and great interviews. Although he does not know it, by me watching him do his thing with blogs, he served as an inspiration to me to start one myself, despite the fact that I am as Web 1.0 as you can get, although I am trying...I lstarted linking in, facebooking, and blogging, all in one week...I don't have the stomach to Twitter quite yet....

Google ads don't infringe trademarks: EU adviser

This interesting news item reported by the CBC indicates that a legal opinion obtained in the course of a European Union proceeding, stated that Google Inc. does not violate luxury goods makers' trademarks when it sells brand names as advertising keywords triggered by internet searches. How sweet it is. The $2500 purse lobby thinks that Google should police their valuable marks, i.e. determine whether a purse is a counterfeit or just your wife's out of style but genuine article.

I have seen these guys in action; they object when anybody except their own stores and their licensed dealers sell their purses, etc., even though this "grey market" is perfectly legal. We saw them try this in two court cases Canada with Seiko watches and with Toblerone chocolate bars for example...I have also seen them come down hard on mom and pop stores that have a few articles for sale but are not "authorized dealers", which you do not have to be to seel something in a free country...

Kentucky Fried Domain Name Dispute

The State of Kentucky is still apparently vigourously pursuing its attempt to seize the domain names of various out of state internet casino operators. I was stunned to see that the Governor had actually retained private attorneys on a contingency fee basis to pursue the claim, thereby avoiding paying legal fees out of government coffers. This type of manoeuvre inserts a rare dynamic into government cases, as the private lawyers will have a degree of zeal that one normally wouldnt encounter because the case does not involve state-employed attorneys who are merely attempting to represent the government's interests. Now law firm's interests are paramount. That means money is driving this case. Scary stuff in domain name law...

China No.1 in Trademarks

An interesting news story reveals that China is ranks first in trademark applications, amongst all the world.

According to The Peoples Daily, "As of September 15, this year 1.005 million applications for trademark registration in China have been reviewed, up 153 percent year-on-year. The figure, covering eight and a half months, equals that of the previous three years and three months, marking an important milestone in China's trademark history. At present, China ranks first in the world in volume of trade mark applications, reviews and registrations, and has become a world leader for trademarks. Reporters learned that the volume of China's trademark applications has ranked first in the world for seven consecutive years from 2002 to 2008. The number of trademark applications is expected to exceed 700,000 this year, ranking first in the world."

This is a startling number, but makes perfect sense given China's huge populations and its remarkable growth as a business powerhouse. We can expect a lot of trademark litigation and domain name disputes out of China. I have become a member of the International Domain Name Forum a web site about the ever increasing and increasingly popular non Western domain names, e.g. in chinese characters. Its been fascinating to learn about this new frontier of domain names.

British Columbia Court of Appeal Denies Linking Means Defamation

A BC Court of Appeal decision added a measure of security for web site developers who link to material that may be defamtory, according to this story, which reported the decision that apparently stated that merely linking is not sufficeint to be found liable for online defamation. Congratulations to John Newton of P2Pnet on his great victory!

Domain name and web site owners should be relieved that lawsuits for defamation on the Internet, although on the rise, should not be leveled against sites that merely link to material on another web site that may be defamatory. As an Internet lawyer and someone who specializes in domain name disputes and web site business disputes, I frequently deal with Internet defamation cases, and this case is a welcome decision and good result for Internet law.

Getting Court Orders To Reveal ID's

Yet another case of someone going to court to get the ID's of anonymous emailers/bloggers/posters. I was interviewed on CBC's The National on one of these cases.

This is starting to be a regular occurance...

It may start happening so much that Google establishes its own "court system"...all online...

Would be like an ICANN arbitration  over a domain name dispute at the National Arbitration Forum or WIPO. I think it would work and would save them a lot of money and headache by avoiding going to court in many cases...

Domain name lawyers are used to this kind of arbitration for online legal issues, and I could see how a domain name attorney could easily adapt to this kind of Internet law case.

Indian Court Gets Descriptive Domain Name Dispute Right

As a domain name attorney, I see it happen all the time in ICANN UDRP's; the Complainant has registered a descriptive domain name and then complains when someone else registers a similar descripitve domain name. It is a fundamental principle of trademark law, which ultimately governs domain name disputes, that one cannot have a monopoly on a descriptive term as that would prevent people from adequastely describing their goods or services in the most apt language.

In this India High Court decision reported by The Times of India, the Judge eloquently pointed this out in his ruling for the registrant of IndiaProperty.com in a complaint brought by the owner of the pre-existing IndiaProperties.com:

"To provide service/business on estate property, houses and/or related business in India, the domain name referring to words `India' and `property' are very common. No right can be claimed on these words,'' said Justice Anoop Mohta. "Such words cannot be said to be trademark or brandable names. They cannot be claimed/treated as coined names.''


According to the Times of India, the court said there was no question of confusing between the two websites except when using the sites for the first time. "The internet domain name is nothing, but an internet protocol, electronic specified address and a unique identification. Unlike telephone numbers, such IP address basically consists of groups of numbers. Everybody knows the effect of dialling one wrong number,'' said the judge. "The user/customer who wants to do business online, is usually aware of the effect of misspelling a word while opening a site.''

This is a general argument that has succeeded for me in ICANN UDRP's and court cases in Canada, but the 'telephone number' spin is a great new and logical addition. Congratulations to the domain name lawyer who succeeded with this case in India!

Olympic Trademark "Infringement Calculator"

The Vancouver 2010 Olympic Games Organizing Committe (VANOC) has posted a "trademark infringement calculator" of sorts on its web site....Very strange, but it purports to demonstrate, with a "points system", what will be considered trademark infringement and liable for enforcement, and what doesn't. Of course VANOC gets to determine how many points to give someone, so this "calculator" isnt exactly a Texas Instruments model.....Scroll down a bit on their site to see the nice illustrations....I included one above from their web site (pursuant to the fair dealing provisions of the Copyright Act of Canada).

The interesting question is how come we haven't heard of any ICANN UDRP domain name arbitration proceedings commenced against purported Olympic cybersquatters (did I just infringe a trademark?, Whoops...).....I would have thought that if there was any chance of getting these purported cybersquats and infringing domain names off the registrants in time for the Vancouver Games (how many points was that?...lol), that a massive effort would have already been underway. After all, whats the point of shutting down a mom and pop t-shirt vendor in Vancouver because of supposed trademark infringement, but not taking any action against the potentially much more massive Internet market...

Think Your Domain Name Was Registered A Long Time Ago?

If you think your domain name was registered a long time ago, check out SYMBOLICS.COM....
According to this story, this domain name was first registered in 1985 (!) and was the first domain name to be registered - EVER - and is celebrating its 25th anniversary. Since then, over 200 million domain names have been registered, according to this Times UK story.

I remember the first time I ever became acquainted with the Internet and domain names...Actually, it was on numerous different occassion, which collectively, led to my interest in the Internet and becoming a domain name lawyer.

1. Using Compuserve on my friend Matthew Sherman's computer. This was about the time the first Space Shuttle took off, so it was in or around 1981. Actually, it must have been 1982, since I think we must have been using his Commmodore 64. I recall we tried using the Flight Simulator game on it...It was pathetic in hindsight, but we took it very seriously. Remember what the interface looked like"?  Matthew Sherman also introduced me to CB radios. That was fun...and kind of like the Internet in a certain way....

2. But that was probably a little after the Folman family had been participating in a test market of another "pre-internet" device, that was called something like "teledon" (that wasnt it I dont think though). If I recall it was a terminal that was set up in a number of homes in Toronto, Canada, that allowed users to access some basic directories of various businesses. It was something like a yellow pages directory if I recall. Anyhow, this was space age technology as far as I was concerned. Simply magic. Must have been in the late 1970's. Maybe Ronit Folman will Google herself and find this post and answer the question of what this device/service was called....

3. One day I was sitting on a run-down patio of a cafe in Toronto, Canada. It wasn't the Jet Fuel cafe in Cabbagetown, because that was across the street...unless Jet Fuel used to be on the West side of Parliament, which is possible....Anyhow, I was having a super strong Latte, trying to wake up from a late night shift of waiting tables, and a somewhat scruffy looking guy sat down like he owned the place and lit up a hash pipe. He said, if I recall correctly, and this was maybe 15 years ago, perhaps in 1995, that he did in fact own part of the place. He said he was a "Technology Evangalist" and even had a card which I wish I still had. He said his job was to get people excited about technology. Apparently he was involved in some pioneering projects at the time. That was the first time I had ever heard of this term or anything similar to it. I forget exactly what he was talking about, but he was talking about some wild conceptual things about technology and the Internet, perhaps about ISP's and networking. Anyhow, it blew me away that there was a new frontier of exploration and this guy was apparently at the forefront of it; discovering and exploring things that people had not even heard of. Sent tingles up the spine. Look, at that time, this was true evangelism; showing and convinving people about the truth and the future of the Internet; leading people out of the woods, talking about amazing new applications and abilities; talking crazy like about how everybody is one day going to be connected via "the Internet".

4. I was working at Movenpick in Yorkville, in Toronto, as a waiter, while taking a hiatus from law school. A German pastry chef, Peter, asked me, being the resident scholar, if I had ever used the Internet. I had not...but I had just heard of it from that guy on the patio...So, I resolved to try it. It was a eureka moment. Think IRC, newsgroups, Pow Wow, Tucows (when it was just a great freeware and shareware site), Command and Conquer played via a program called KALI which enabled multiplayer games before there was any such thing commercially available ($20 for a lifetime subscription...had to send cash in the mail to a guy in New York I think). this must have been around 1995 or 1996. Which reminds me of my first VOIP experience. There was a guy who had a web site that you could use to leave him a recording on his answering machine tape (yes; tape) in New York City. That was wild!

5. I was at Osgood Hall Law School in 1995, and I took a course entitled "International Taxation". I wrote a paper called "Taxation of Internet Commerce". I "self-published" on the web back in 1996 and then First Monday, a peer-reviewed journal on the Internet (one of the first, if not first, of its kind) graciously contacted me and asked to publish it in their journal. This was a widely cited paper, and was the first paper on this subject of its kind. This is what got me interested in Internet law scholarship.

6. Then finally there was my first domain name dispute, Toronto.com v. Toronto2.com. I got my first taste of domain name litigation, trademark law, and the value of domain names. This was in 1999. It was a Federal court proceeding brought by the Toronto Star and Bell. I won the case in my first year of law, months after passing the bar. That was the start of my becoming a domain name lawyer. There I learned about and pioneered the "descriptive domain name" defense. I spoke about this domain name case briefly when I was interviewed for DomainBits.

Once in a while a meet someone who was involved with the Internet in the mid-1990's. Once in a very long while, I meet someone who was involved before that. Those were heady days. A few of us domain name lawyers from the late 1990's and early 2000's are still around and practising today and still in touch. Domain name law has exposed me to every facet of the Internet, as domain names are the cornerstones of all Internet businesses.

Interesting Domain Name Dispute Over SPCA.COM

The Montreal Gazette is reporting an interesting and serious domain name dispute over SPCA.COM. Apparently, the former director of Montreal's local SPCA registered SPCA.COM back in 1996, and the Washington D.C. HQ of the international SPCA has been using the domain name since. Now, according to the story, the local Montreal SPCA is apparently arguing in court within the context of seeking an injunction, that the former director registered the domain name on its behalf, or at least that it rightfuly belongs to the Montreal SPCA. What makes this serious is that the domain apparently gets something like 30 million hits a year. I will be following this story.

As a domain name lawyer, I hear similiar stories about this kind of domain name dispute all the time. Usually its a web site owner having a problem with their former web designer who registered the domain name on its behalf, or a former employee or former partner having done the same. Usually its a huge problem for the site owner because of the expense of going to court. Obviously in this situation the value of the domain name, its importance, and the huge traffic, are more than enough to get the parties to go to court. Sometimes however, the registrant may acvually have good rights to the domain name as he or she registered it and "licensed" its use to the site owner, or didnt receive the promised or agreed compensation. We shall see how this case turns out. Either way, this case represents an important milestone in Canadian domain name law, as it is one of the first cases of parties going to court over a domain name ownership dispute.