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!

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...

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...