Business News Network (BNN) Interview Regarding Groovle.com Case

You can watch the interview with Groovle.com co-founder Jacob Fuller and myself from New Year's Eve, 2009.

Google Loses Domain Name Dispute

Just heard from the National Arbitration Forum that my clients won a great domain name dispute over GROOVLE.COM. Google had complained that my clients were "cybersquatters". The unanimous three distinguished three member panel disagreed. You can read the decision here.

Congrats to Groovle.com! This was one of those rare UDRP cases where the Panel didn't even have to consider the second and third prongs of the three-part UDRP test (legitimate interest and good faith registration and use). The Panel deserves a lot of credit here for being decisive in its appreciation for the substantial difference between Google and Groovle. As a UDRP lawyer, I can say that this was a real groovy case, and only the second case that Google ever lost; the first one was Froogle.com...

IDN (Internationalized) Domain Names and Trademark Law/UDRP

An IDNForums.com member recently asked me a good question and I took the time to answer it. I thought that I would share my answer here, although I have of course removed the specifics from the situation and changed some facts to keep things confidential. Accordingly, the domains etc. referred to below are made-up for illustrative purposes only. If anyone has any thoughts on this I would like to hear them. In particular, I am still on the look out for a case that pits a foreign language domain name against an ASCII transliteration.

Your question to me was whether your Chinese language domain name, which you have owned since 2001, meaning EXCITEMENT, is safe from a UDRP if you never offer to sell it or put ads on the site, considering that there is a well established web site owned by a large company that has the ASCII Chinese transliteration equivalent, and they have been around since before you registered the Chinese character version.

The UDRP covers Chinese language dot coms (See this Verisign FAQ). Pursuant to the UDRP, any claimant would under would have to meet the three-part test:

1. Whether the domain name is confusingly similar;
2. Whether the registrant has a legitimate interest in the domain name; and
3. Whether the registrant registered and used the domain name in bad faith.

There does not appear to be any consensus or conclusion regarding how the three part test applies to IDN’s when it comes to foreign language equivalents of ASCII trademarks (See for example this article, and see also this one).

In my opinion, a UDRP Panel hearing an IDN case involving foreign language equivalents of a trademark, would first determine whether in fact the Complainant owns an alleged trademark that pre-existed the disputed domain name.

I would start by checking out the trademark registry in China and performing a thorough search for both the ASCII transliteration version and the Chinese language equivalent.

I would be somewhat surprised if the operator of EXCITEMENT.COM (Chinese language) did not have a trademark registered before your domain registration. Even if they didn’t however, it is my opinion that they would likely be found to have held “common law trademark rights” prior to your domain name registration based upon extensive use of the domain name. I come to this conclusion based upon the fact that they had operated the site for some time before your registration (see archive.org).

Accordingly, the next step would be for the Panel to determine if the disputed (Chinese language) domain name was confusingly similar with ASCII Chinese transliteration. This is where the law is unsettled in particular. Nevertheless, it is my opinion that the Panel would apply the doctrine of foreign equivalents and thereby determine that the disputed domain name and the common law trademark are confusingly similar.

The Panel would then look to see if you had a legitimate interest in the domain name. In order to show a legitimate interest, the best evidence is your actual use of the domain name. I realize that the Chinese transliteration EXCITEMENT.COM portal covers a lot of topics, it being a general search portal full of content, but there is still plenty of room to build a web site for all kinds of things, for example, a web site development company. You would be well advised however to ensure that there are no conflicting trademarks in connection with your use of the domain name. Not using a domain name is sometimes considered “passive holding” and shows a lack of legitimate interest and sometimes bad faith. Furthermore, PPC links are always problematic, even though some Panels treat them as a legitimate use.

In this part of the test, you would also show that your domain name is a common word, meaning "excitement". You would argue that you have a legitimate interest in any descriptive, common dictionary word. You would also show how the term, "excitement" and the Chinese transliteration equivalent are used by numerous companies for all kinds of goods and services and the Complainant does not enjoy any kind of monopoly on the term. You would also point out that they have sat on their rights, if any, by not trying earlier to take the domain name.

Then it comes to whether you registered and used the domain name in bad faith. The Panel might look to what other domain names you have registered to see if there is a pattern of registering trademarks or other domain names that try and take advantage of someone’s ASCII domain name. They would want to see if you targeted this domain name because you likely knew about the ASCII site, or whether this dictionary term was just one amongst many other dictionary terms that you registered, thereby showing that you likely registered it because it is a common term, not because of the trademark owner’s web site.

So, in conclusion, not offering to sell and not using PPC is a good idea, but developing is the best idea. Furthermore, you need to make sure that your background is clear of any evidence that could be used to show a pattern of registering infringing domain names, and also clear of any evidence that could indicate that you targeted the ASCII web site.

NEWSFLASH: DOMAIN NAME ARBITRATOR BEING INVESTIGATED FOR MISCONDUCT

The following ADNDRC press release was brought to my attention by IDNFORUMS.COM members.

Announcement on Domain Name Dispute Cases Handled by The Asian Domain Name Dispute Resolution Centre (Hong Kong Office) Hong Kong.

5 October 2009 - The Asian Domain Name Dispute Resolution Centre (ADNDRC) announced today that the ADNDRC Council has formed a special committee to investigate whether, in view of the potential claims which have been made against the Hong Kong Office of the ADNDRC and its personnel, there are potential liabilities of ADNDRC caused by any wrongdoings or misconduct on the part of ADNDRC administrative personnel in Hong Kong, in connection with its handling of domain name disputes. The special committee is comprised of Hon Justice Michael Hartmann (chair), Mr Robin Peard JP and Mr Fred Kan. The special committee will report its findings to the ADNDRC Council for such action as it deems appropriate. Allegations made against certain individual ADNDRC Panelists will be investigated by the ADNDRC Council directly. Pending the outcome of these investigations, the ADNDRC will make no public comment on the matters which are the subject of the investigation. About Asian Domain Name Dispute Resolution Centre (“ADNDRC”) (Hong Kong Office)


The Asian Domain Name Dispute Resolution Centre (“ADNDRC”) is one of only four (4) providers in the world and the first and only one located in Asia, of dispute resolution services in regards to generic top level domain names (gTLD's), which are the top level domains approved by the Internet Corporation for Assigned Names and Numbers (ICANN), which appointed the ADNDRC as a domain name dispute provider on 3 December 2001. To learn more about the ADNDRC, please visit: http://www.adndrc.org/.
 
...........................
 
This is simply shocking that there have been serious enough complaints and reasons for the ADNDRC to have to commence an investigation of possible misconduct.
 
In the 10 years of domain name dispute resolution, an investigation of misconduct by an arbitration provider is unprecedented. We must watch the outcome of this very carefuly....

ADDENDUM:
Here are some more apparent details from another news item:
http://www.abnnewswire.net/press/en/61579/Cheung-Kong-(Holdings)-Limited.html

NBA Star Now Owns 800 "Cybersquatted" Domain Names

Could Chris Bosh Be a Future ICANN UDRP Respondent at WIPO or NAF?

So I read the news item where Toronto Raptors NBA star Chris Bosh won a judgment for $120,000 against a domainer, Luis Zavala (Hoopology.com) for registering ChrisBosh.com. The judgment apparently came down in April, but now Bosh's lawyers reportedly convinced the judge to order that the domainer's 800 other mainly sports and celebrity domain names domains be handed over to Chris Bosh as well, since the defendant wasn't likely to pay the $120,000 judgement...

Bosh's lawyer reportedly stated, that "the Raptors’ star has no intention of holding onto any of them except his own. “He’s not trying to make any money here. He just wants to give these players their names back.".

So let me get this straight....Chris Bosh sues a guy for cybersquatting and then takes 800 cybersquatted domain names as booty? And Bosh's lawyers are apparently going to decide for themselves, who deserves the domain names: “We are notifying the world that anyone whose name is on this list that has a legitimate right to the domain name, Chris will transfer it to them for free,” said Brian Heidelberger, one of three lawyers who represented Bosh." Wow. So the Judge gave up the court's jurisdiction to a sports star and his lawyers to determine who has the rights to particular domain names...Amazing. Here is the actual text of the lawyers' terms for handing over the domain names - a kind of screwy para-UDRP process entirely within the discretion of a basketball star and his lawyers:

Chris Bosh and Max Deal offer the return of the domain name free of charge as a courtesy to the celebrity named herein, provided that such person promptly requests the return of such domain name in writing from Max Deal. Domain names will not be returned without a direct written request from an authorized person to Hadi@MaxDealTechnologies.com. Prior to transferring any domain name on this list, Chris Bosh and Max Deal reserve the right to require documentation in their reasonable discretion to support the requester's rights in the domain name. Domain names on this list may or may not be renewed at Chris Bosh and Max Deal's sole discretion. Chris Bosh and Max Deal reserve the right to at any time in their sole discretion to delete or cancel domain names on this list. Chris Bosh and Max Deal will not charge any fees for the transfer of domain names on this list. All third party costs relating to transfer of any domain name on this list to an authorized rights holder, including but not limited to transfer fees charged by the requester's registrar, are the sole responsibility of the party requesting transfer. Chris Bosh and Max Deal make no representations express or implied regarding any domain name on this list. By requesting or accepting the transfer of a domain name, you hereby release Chris Bosh and Max Deal from any and all liabilities in connection therewith.

But wait...WHO IS MAX DEAL? Good question! Its a social networking site associated with/owned by Chris Bosh. According to Bosh's press release, "Max Deal is a social media company that allows brands to increase their reach". How does that fit in? This is what Chris Bosh has to say according to his press release:

"I will offer the return of the domain names free of charge, but I'd also love the opportunity to show their owners how Max Deal can help."

Ahhh, I get it. When someone calls up to get their domain name back off of Chris Bosh, the new owner of the cybersquatted domain names, he will take the opportunity to sell them on how they can use the domain names in connection with his social media business....According to the terms copied above, Chris Bosh can delete or cancel any domain name in his sole discretion. Better be careful or the domain name could get dropped and picked up by another cybersquatter. What happens if Chris Bosh decides to not give back a name because the claimant doesn't meet his criteria? Maybe Bosh takes the position that one of the highschool basketball players or Venezuelan racecar drivers on his list doesnt have common law trademark rights? Could Bosh be the Respondent in a ICANN UDRP? The Complainant could argue that Bosh registered the domain names in bad faith and is using them in bad faith because he won't give them back and registered them with the intention of using them in bad faith as part of his monetization scheme in Max Deal....

Can you imagine if a domainer registered 800 celebrity domain names and his defense was that he would give them back to anyone who convinced him that they were the rightful owner and listened to his pitch that they could do great business together by letting the domainer monetize their name? What would happen to the domainer in a case like that?....

Its great when someone is there to help out his fellow man. Thankfully the Judge realized this when she allowed Chris Bosh and his entourage to "distribute" the ill-gotten domain names.

And I note that at least one of the domain names in the list, cockblocks.com, is not a celebrity that I am familair with. I wonder what Chris plans on doing with that name....Will the rightful owner please stand up?

For more information on domain name law please visit http://www.dnattorney.com/.

Domain Name Dispute: The Movie?

SLIDETV.com, Inc. today declared victory in its domain name dispute with Slide, Inc. in what has been described as a modern day David vs. Goliath story. The Redwood City, California-based internet marketing company now plans to turn the drama into a feature film.....Which is strange for two reasons: First, this UDRP dispute was back in August, so its a little late to "declare victory". Second, the movie doesn't sound like it will be an Official Jury Selection at Cannes any time soon. You can read a little more about it here. Anyhow, congrats to the UDRP winner in this NAF dispute.

WIZZAIRSUCKS.COM Claims Victory in ICANN UDRP Domain Name Dispute at WIPO

Well, that must suck for Wizz Air, the Hungarian discount airliner.....

Panelist Sebastian Hughes provided an exceptionally well-reasoned and fair decision in a Complaint brought by the airliner against Texas Wizzair critic, Holden Thomas, proprietor of WizzAirSucks.com.

Although the Panelist found that, "the addition of the word “sucks” as a suffix in the disputed domain name does little to distinguish the disputed domain name from the Trade Marks, and that there is a clear likelihood of confusion between the disputed domain name and the Trade Marks", the Panel properly denied the Complaint upon analyzing the other two parts of the three-part UDRP test ("legitimate interest" and "bad faith registration and use").

The Panelist wrote on "Legitimate Interest": The Panel finds no evidence to suggest the Respondent, in registering the disputed domain name and setting up the Website, has misleadingly diverted consumers to the Website. Other than a bald assertion of tarnishment, the Complainant has not made any submissions nor filed any evidence to suggest that the Website has been set up and used in order to tarnish the Trade Marks. In any event, fair use criticism does not amount to tarnishment and is not proscribed under the Policy (Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014).

The Panelist wrote on "Bad Faith": In any event, in all the circumstances, the Panel is of the opinion that the use of the disputed domain name in respect of genuine and non-commercial criticism of the Complainant does not amount to bad faith registration and use.

Having read and reviewed domain name dispute cases for many years, and having represented clients in numerous domain name disputes as a domain name dispute lawyer, I found the Panelist's decision to be extraordinarily well-balanced, and he applied the UDRP in a precise and comendable manner.

Good to see that free speech on the Internet has been protected by domain name law.

Canadian Prime Minister Needs A Good Domain Name Lawyer?

Canada's Globe and Mail reported today that "Edmonton-based blogger Dave Cournoyer pointed out on his blog Thursday night that the website stephenharper.com is actually a link to a portal for adult personals, replete with images of women clad in black lingerie and stiletto heels."  *****[The Story seems to have been removed by the  Glober now...weird...Maybe because it was inaccurate or for some other reason??]*****

Upon checking it on Friday morning however, I saw that it is currently just pointed to a standard PPC page. The story also points out that StephenHarper.org is a lampoon web site about the Canadian Prime Minister.

As a domain name dispute lawyer, I would say that the .org domain name is probably beyond the reach of Stephen Harper, assuming he would even be interested in going after it, since it is likely a non-commercial and fair use, e.g. for the purposes of review, critiscism, and commentary, as understood by the UDRP and by trademark law. The .com however, could theoretically be caught by the ICANN UDRP, if the PM brought a case to WIPO or the NAF, for example, if he was able to provide "trademark rights" in his name, and showed that the registrant had "no legitimate interest" in the domain name, and registered it and used it in "bad faith".

In this Jay Leno case reported by the Calgary Herald, one can see a summary of the WIPO's analysis of the UDRP provisions regarding personal names and common law trademark rights. The actual ICANN UDRP WIPO domain name dispute case can be read here.

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.

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...