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.

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/.
 
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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

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.

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.

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!

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.