By Zak Muscovitch.

Two big upcoming conferences are taking place in India; DomainX in August, and ICANN in November. I have been to India twice now, with my most recent trip being August, 2015, for DomainX. I plan on going for my third trip this August, for DomainX 2016. Here are five observations/tips about traveling to India for a domain name conference:

1.    The Next Billion People on the Internet to Come from India

 According to former ICANN CEO, Fadi Chehade, with the next billion people on the Internet likely to come from India, the country has the power to shape the future of the Internet. “India is central to what the Internet is at the global level… India is not simply getting into the digital world. The country is already an incumbent, a driver in the digital world in every sense of the word”, Mr. Chehadé said speaking at an event in India in March, 2015.   As I wrote and explained in my previous Blog post, all the evidence points towards India becoming the leading Internet powerhouse as a result of its highly educated, English speaking, young, dynamic, and massive workforce. If your business has the potential to expand into the Indian market, there is no better place to start than visiting India yourself. The .in market is showing a lot of promise and there is substantial growth in the number of Indian domain investors in many extensions. It could be “the next China” in terms of the huge potential demand for domain names amongst a population of 1.3 billion people who are only now getting online. Currently only about 20% of India’s populace is online, and it is increasing by about 14% per year.

2.   Use Your Points from Buying Thousands of Domain Names on Your Credit Card

You probably have a ton of points saved up from buying thousands of domain names on your credit cards, so it may be time to burn them on some flashy flights. Aside from India’s national carrier, Air India, and its other major airline, Jet Airways, two of the world’s greatest airlines fly to India; Emirates and Etihad. Both Emirates and Etihad a380 aircraft feature showers in their first class cabins, and there are even bars in business class, and both  are available via points redemptions. I had the time of my life flying on Emirates on my first trip to India. For more information about redeeming your points for flights, you can read a blog called, One Mile at a Time.

3.    Take a Tour of India and see the Taj Mahal

If you are going to India on business, tag on a tour to see some of India. DomainX 2016 will be held in Delhi, and ICANN will be held in Hyderabad. Delhi is a major hub for Internet businesses, as is Hyderabad, which has earned the Moniker, “Cyberbad”. Hyderabad was the location of the first DomainX conference, in 2014.

Both cities have a lot to offer in terms of sightseeing. In Delhi you can visit the old Delhi market, the Indian parliament buildings, and Humayun’s Tomb – all impressive sights worth seeing. But a few hours’ drive from Delhi, you can see a true Wonder of the World – The Taj Mahal. Now, I live near Niagara Falls, and to be honest, it has nothing on the Taj Mahal. It is simply mind-blowing in terms of its architecture and what was involved in building it. DomainX will be taking some attendees on a tour of the Taj Mahal on August 6, 2016, but you can also go on your own, and it is a relatively short drive away on a new highway. In Hyderabad, it is worth visiting the Taj Faluknuma hotel, which is one of the great hotels of the world. It used to be a palace owned by the richest man on earth. He kept a diamond so big that he used it as a doorstop.

But aside from these two great cities and Agra, where the Taj Mahal is located, also take the time to visit some wonderful places like Udaipur, Rajasthan, Kerala, Mumbai, and the other many incredible places throughout India. Udaipur is where part of Octopussy was filmed – at the Taj Lake Palace hotel – as you may recall from the below picture.

4.     Enjoy the Indian Food with New Indian Friends

When networking at DomainX or ICANN, be sure to make some new friends who can show you some genuine Indian cuisine at local favorites. At DomainX 2015, I met one fellow who put me on to my all time favorite restaurant, Punjabi By Nature, which despite the somewhat odd name, featured incredible north Indian cuisine, such as marinated and grilled leg of mutton. Wherever you go, you will see “Thalis” on offer, which are set dinners of various dishes, available in vegetarian and non-veg, such as the one depicted below:

5.   Learn About Indian History

Before you go, take some time to research the amazing history of India through documentaries and books. The most fascinating documentary on the subject that I saw, was Michael Wood’s “The Story of India”. Nobody does documentaries like the BBC. Also, go back and watch the Gandhi movie with Ben Kingsley, which is extraordinarily well done, and will mean a lot more to you once you visit India for yourself.


By Zak Muscovitch.

Sometimes even a famous brand owner just runs up against the wrong domain name owner. Take for example, the cases of Armani and Sony. Armani lost a UDRP complaint for Armani.com and Sony lost a complaint for SonyHolland.com. How? That’s where the “tough luck” comes in. Both names were registered to individuals whose actual names corresponded to the respective domain names.

Armani.com
The Armani.com case goes back to 2001. The famous Italian fashion house, G.A. Modefine owned the world famous trademark, ARMANI. They commenced a UDRP Complaint against….Mr. A.R. Mani, of Vancouver, British Columbia. I think you know where this is headed now…The Respondent filed evidence showing that his full name was Anand Ramnath Mani, including even his baptismal certificate as proof. He also showed that he registered the Armani.com domain name in 1995, used the domain name for email, and that he registered the domain name because his initials were A.R. and his last name was Mani, adding up to, “ARmani.com”.

The Respondent also showed that it was the Complainant who contacted him first, and not the other way around. In fact, the Complainant, through its intellectual property attorney, offered the Respondent the sum of $1,240 Canadian dollars to purchase the domain name. The Respondent refused, and demanded only $1,935 US dollars, which worked out to about $2,437 Canadian dollars – in other words just over $500 more than what the Respondent had demanded, which was a very “modest” and “reasonable” sum as the Panelist, Nick Gardener, pointed out in the decision. Moreover, the Complainant failed to disclose to the Panel that lengthy history including the offers, which resulted in a finding that the Complainant had abused the UDRP. The Panel eloquently pointed out as well, that it is “simply wrong” for the Complainant to think that just because it has a famous brand that it can use the ICANN UDRP procedure to “dis-posses summarily” the Respondent’s domain name which consists of his initials and surname. According to historical Whois data, it appears that Mr. Mani ultimately transferred the domain name to the Complainant in 2004.

SonyHolland.com
More recently, a similar situation arose with Sony. Sony of course is also a world famous brand. In 2008, Sony Kabushiki Kaisha, otherwise known as Sony Corporation commenced UDRP Complaint against Sony Holland. The Complainant had trademarks all over  the world and operated its website at Sony.com and and also in Holland, at Sony.nl. Unfortunately for Sony however, it ran into  Sony Holland. Sony Holland was an individual who was born, “Sonia Einerson” and later took the name of “Sonia Peterson” when she was first married, and went by the name of Sony Peterson, even showing a hotel receipt from a Marriott in 1998 where her name was listed as Sony Peterson. She later maried Gerald Holland and became Sony Holland. She was a singer and had been using her name, Sony Holland for years before any notice of the UDRP dispute. She even showed copies of articles from Jazz Review and other publications, which all referred to her as Sony Holland.

The Panelists, Warwick A. Smith, Sandra A. Sellers, and William R. Towns, decided that that there was no evidence whatsoever of bad faith registration or use, and that the Respondent had an entirely plausible explanation of why she registered the domain name, and accordingly, the Respondent got to keep the domain name, although Reverse Domain Name Hijacking was not found. Today, you can visit SonyHolland.com, and read about Sony’s latest performances, as she still owns the domain name.


By Zak Muscovitch.

If I was great at business I probably would have not have become an Internet lawyer. That being said, through my work, I do see a lot of successful and unsuccessful businesses, and have learned a thing or two about the domain name industry over the past 14 years. Whenever I read about the new gTLD’s, I always have to ask myself, are these morons or geniuses?

I have resisted openly commenting on the business case of new TLD’s for some time since I know so many people who are involved in them one way or another. Nevertheless, whenever I read about the new TLD’s, my immediate reaction is that for the most part, new TLD’s will never fly. I can’t help but think of other extensions such as .museum, .aero, etc., and also wonder why anybody would really want to buy a new TLD domain name. Do you really want an email address of john.smith@fresh.apricots? Will, for example, Samsung really want or need Info@Samsung.Televisions or www.Televisions.Samsung? The whole thing makes absolutely no sense to me, frankly. I just don’t see the market for nearly any of them, making we wonder whether investing in them is moronic.

But, on the other hand, when I see big money being raised, when I see very successful businessmen involved, when I see that the people behind the new TLD’s are far more adept and accomplished in business than myself, I think maybe instead of being morons for paying $185,000 per application, they are actually geniuses.

Take for example, Internet entrepreneur, Colin Campbell, whose prior successes include Tucows Interactive and Hostopia.com. He is leading the effort to launch .Club as a new gTLD. His company, .Club Domains, LLC just “won the rights to the new gTLD via the first “private auction: to be completed since ICANN began the new gTLD process”. In its press release, .Club Domains LLC also announced that it had exercised its option to complete a $7 million funding round”. Bottom line, if an Internet visionary and entrepreneur like Colin Campbell feels that .Club is worth being the successful bidder for, and that it is worth  investing $7 million in, then who am I to question his business acumen. Even though I don’t “see it”, it is likely that he “does see it”, and is therefore likely a genius rather than a moron.

Also take for example, Frank Schilling, a domain name pioneer and incredibly successful and adept businessman. He applied for a reported 54 top level domain names. Again, I don’t see the market for these 54  new gTLD’s that Frank Schilling’s Uniregistry company applied for, but he ought to know better.

Accordingly, guys like Campbell and Schilling are extraordinarily well placed to see the future of domain names, and perhaps that is what makes them leaders, because they see what many don’t. Perhaps they see business opportunities that exist apart from actually selling domains to registrants. Accordingly, I am prepared to, and want to believe, that they are geniuses when it comes to the new gTLD’s, despite my initial and current scepticism.


By Zak Muscovitch.

The ICANN Board announced (kinda, since I do not really consider that much of announcement, so thankfully great websites like DomainIncite.com, DomainNameWire.com, and TheDomains.com have reported the “announcement”), that the Arab Center for Dispute Resolution (the “ACDR”), was approved as the latest ICANN Uniform Dispute Resolution Policy (“UDRP”) Dispute Resolution Provider.

As pointed out by the Internet Commerce Association under the leadership of Phil Corwin, ICANN, despite its unquestionable competence to provide adequate and responsible oversight of the UDRP process, has to-date, failed to put in place a “contract” between ICANN and any UDRP Dispute Resolution Provider (NAF, WIPO, the ADNDRC, and the CAC):

“It is simply inexcusable that ICANN accredits UDRP providers — and thereby provides them with the power to extinguish or transfer domains — when there is no standard contract that sets enforceable standards. Given the value of many domains and the basic rights that any registrant is entitled to, we intend to keep pushing for ICANN to do the right and responsible thing.”

ICANN is apparently well-aware of this criticism, and responded in its “rationale”, that:

“Other commenters suggested that ICANN develop contracts with each of its UDRP providers as a means to require uniformity among providers. Contracts have never been required of UDRP providers.”

Many may be quite surprised that ICANN appears to be of the remarkable view that ‘if something has been broken for so long, there is no point in fixing it now’. From my own perspective as a lawyer, having a contract in place which clearly establishes obligations, has traditionally been viewed to be a very effective way of establishing accountability, and accordingly it is quite surprising for a sophisticated, wealthy, cosmopolitan, and beautiful organization, like ICANN, to shy away from a mere contract.

That being said however, a contract is not the only means available to ensure consistency among the growing stable of diverse Dispute Resolution Providers. An oversight committee charged with regulating the performance and delivery of dispute resolution services is an equally effective mechanism, and arguably even more effective mechanism, for ensuring that all UDRP dispute resolution providers uniformly apply the UDRP rules from a practical perspective, and for ensuring that fairness is a hallmark of the UDRP process. 

I am not involved to any extent in ICANN governance (yet), but someone in the ICANN world must be able to at least justify what would appear to me, to be erroneous approach that appears inconsistent with ICANN’s mandate and interests. ICANN actually makes this point for me I think, since ICANN, in its rationale, appeared to admit that uniformity of dispute resolution practices is indeed a concern:

This is a positive advancement and helps address concerns of ICANN‘s ability to, in the future, identify areas where uniformity of action is of its obligation to abide by ICANN modifications that could enhance uniformity among providers.”

Furthermore, ICANN makes my point even clearer I think, when it has admitted in response to ICA questions, that it will in fact have contracts for URS providers. If contracts are a good idea for URS, then why not UDRP? Your guess is as good as mine.

The ACDR a Boon to Domain Name Owner’s?

Nevertheless, there is a potential silver lining in ICANN’s decision to appoint the ACDR. In fact, the ACDR could even turn out to be a boon to domain name owners.

In reviewing the ACDR’s draft Supplemental Rules, we can see that for a Respondent in a UDRP domain name dispute, the cost of having the three-person panel is relatively very low. If named as a Respondent at NAF or at WIPO, a domain name owner will have to fork out US $2,000 for the privilege of having its domain name dispute decided by three persons instead of one, in most cases. 

However, at the ACDR, the cost to a Respondent for the very same service, appears to be only US $900, meaning that it will be a lot more affordable to buy some justice at the ACDR. Of course, these prices may very well change, especially if the ACDR reads this blog post and realizes that they are now the most Respondent-friendly UDRP provider out there, which is bad for business when that business relies upon forum-shopping Complainants, as do all ICANN accredited Dispute Resolution Providers…when there is no contract or oversight committee-enforced uniformity.

A special thanks to Nat Cohen for getting me interested in this issue.


By Zak Muscovitch.

Not all domain name disputes are covered by the UDRP. In fact, the UDRP is only intended to cover a certain kind of domain name dispute.

Back on October 24, 1999, ICANN’s Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, clearly stated what the intended scope of the UDRP was to be. 

The UDRP was to be for the:

administrative resolution for only a small, special class of disputes. Except in cases involving “abusive registrations” made with bad-faith intent to profit commercially from others’ trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide.”

Accordingly, the UDRP is only supposed to be used for true “cybersquatting” cases. Other kinds of domain names disputes, such as genuine disputes involving allegations of trademark infringement, contractual disputes, and business disputes, for example, are supposed to be brought to courts instead of to an ICANN dispute resolution provider.

In the recent case of Estate of Malcolm McLaren v. Paul Norstrum August, over the domain name malcolmmclaren.com, the UDRP Panelist, Bruce E. Myerson, correctly decided that the dispute was not within the proper scope of the UDRP. The case involved the estate of the late English fashion and music impresario, against a former associate of Mr. McLaren. The Panelist stated as follows:

“Based upon the allegations of the parties, the Panel finds that this is a business and/or contractual dispute between the Complainant and Respondent that falls outside the scope of the UDRP.  
For the foregoing reasons, the Panel concludes that the instant dispute falls outside the scope of the UDRP.” 

Not only did the Panelist correctly uphold the proper scope of the UDRP in terms of it not being intended to resolve genuine business disputes, but the Panelist also made important references to another aspect of domain name disputes that may cause a particular dispute to fall outside of the Policy, even where subject-matter wise, it ought to be within the scope of the Policy:


“Moreover, this case , is like the situation in [Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007)] in that:
When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible.  National courts are better equipped to take evidence and to evaluate its credibility.”

Accordingly, as the Panel pointed out, even where a particular domain name dispute may be a true “cybersquatting” case that should normally be adjudicated under the UDRP, because there are no cross-examinations, discoveries, and live trials in a UDRP proceeding, a Panelist ought to dismiss a complaint where it is not appropriate to make important factual determinations without such a full hearing that can only be provided by a court.

One of the most serious mistakes that I see intellectual property counsel make, is trying to fit a legitimate dispute into a UDRP rather than take the proper course of action and proceed with a regular court case.


By Zak Muscovitch

It took a law professor to met out some rough justice in a recent domain name dispute. In the case of Global Village Publishing, Inc. v. chenwen, Professor Darryl C. Wilson of Stetson University College of Law in Gulfport, Florida, ordered the three-letter domain name, GVP.COM to the Complainant, even though the Complainant only had a trademark for GVPI.

National Arbitration Forum UDRP Panelist, Professor Darryl C. Wilson


Not only did the Complainant not even have a registered trademark for GVP, the Complainant didn’t even make any “specific claims of confusing similarity, other than noting that it previously owned the domain name for its own business”. Now, normally it would take a lot more than this meager offering by the Complainant in order for a Panel to transfer a common three-letter acronym in the English language from the Registrant to the Complainant. 

But this was not a typical case and the Panelist managed to use the UDRP in order to achieve some justice, rather than narrowly applying the law. As many practicing litigation lawyers will tell you, this is not altogether surprising since judges often (and arguably should) apply the law broadly in cases in order to achieve justice. In such circumstances, the judge will see ‘where he or she wants the case to end up’, and will then find a way to reach that conclusion through the application of the law, even if the route must take some twists and turns along the way. 

The reason that this was not a typical case, was that the Complainant alleged that its account with its domain name registrar had been hacked by the Respondent, who then stole the domain name. The Respondent was accordingly, plainly called a thief by the Complainant, and the Respondent did not even respond to the Complaint. The fact that the Respondent did not even respond probably gave the Panelist reason to believe that this allegation of theft was true, and accordingly, justice would be served by restoring the domain name to its rightful owner, the Complainant. 

The UDRP however, was not intended to be used as a broad tool to deal with every kind of domain name dispute. In fact, it was originally conceived as, and intended to be, a very limited tool for a very specific use; it was intended to address only the very clearest cases of what has come to be known as cybersquatting. ICANN’s Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, dated October 24, 1999, in fact expressly stated that the UDRP Policy was to be “minimalist in nature”:

Except in cases involving “abusive registrations” made with bad-faith intent to profit commercially from others’ trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.” Thus, the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger’s trademark) is a feature of the policy, not a flaw. The policy relegates all “legitimate” disputes–such as those where both disputants had longstanding trademark rights in the name when it was registered as a domain name–to the courts; only cases of abusive registrations are intended to be subject to the streamlined administrative dispute-resolution procedure.” 

Accordingly, the theft of domain names, per se, was not intended to be dealt with through the UDRP, since “theft” was not part of the “narrow class” of cases meant to be dealt with. Panels have regularly stated that they are not “competent to rule on the allegations of theft in the framework of [UDRP] proceedings” for this very reason.

Nevertheless, Panels can and do use the UDRP to address Complaints based upon theft. It is possible, sometimes with some minor intellectual gymnastics, to frame the unlawful registration of a domain name acquired through theft, in terms of the required prerequisite elements of the UDRP, namely; a) the domain name corresponds to the Complainant’s trademark; b) the registrant has no legitimate interest in the domain name; and c) the domain name was registered and used in bad faith. This is precisely what the Panelist in this case was able to do.

In a hotly contested domain name dispute where the Respondent actually responds, the fact that a Complainant’s trademark is only GVPI and the domain name is GVP.COM, may be more than enough to find that the Complainant does not even have sufficient trademark rights to win a UDRP dispute. But where a Respondent does not even respond and a Complainant makes allegations of theft of the domain name, it is possible for a panelist to overlook that distinction, and instead find, as the Panelist did in this case, that the trademark and the domain name were sufficiently confusingly similar, even, remarkably, where the Complainant failed to even make this crucial argument itself.

As can be seen from the above, the Panelist went out of his way to help out this Complainant, and did so apparently, to met out some justice, which was arguably appropriate in the circumstances, rather than parochially follow a very narrow interpretation of the UDRP and case law. And that, is how there can be justice instead of mere law in the UDRP.

Critics of a liberal interpretation and application of the UDRP will justifiably have cause for concern in harnessing the UDRP for a purpose for which it was not intended, but on the other hand, where a Respondent does not respond, and where a Complainant has made out a case based upon credible evidence that can be matched with the three required prongs of the UDRP, an equally persuasive argument may exist that where there is no harm, there is no foul, and justice is the true end of the law, not merely the means.


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 https://www.dnattorney.com/.


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.


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.


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.