Your Source for Domain Dispute News and Information Thursday, April 13, 2006, Vol. 7 No. 04
 

 

Welcome to Domain-News, a complimentary news service of the National Arbitration Forum. The National Arbitration Forum is one of the world's largest neutral administrators of arbitration services and one of four ICANN-approved providers. We invite you to visit our website at www.arbitration-forum.com.

 

The National Arbitration Forum invites you to subscribe directly to Domain-News. If you have been forwarded this issue, and wish to receive a clean copy with active links, please send your contact information and e-mail address to domain-news@arb-forum.com. Type "SUBSCRIBE" in the subject header, and you will be added to our growing list of recipients.

 

 

 

In This Issue

 

 

Danica Racing, Inc. v. Web Master

 

Courts Differ on Role of Keywords in Trademark Infringement Actions

 

"American Idol” Fan’s Website Irks Parent Company

 

 

 

Recent Decisions

 

 

Danica Racing, Inc. v. Web Master

 

Automobile racing star Danica Patrick initiated a claim against Respondent, Web Master, the registrant of the <danicapatrick.com> domain name. Complainant asserted common law rights in the <danicapatrick.com> domain name based on continuous and extensive use of the mark in connection with her automobile racing career and sports merchandise since 2002. Respondent’s domain name resolved to a pay-per-click website featuring sponsored links relating to Complainant, racecars, and pornography. The website also contained pop-up advertisements. The Panel concluded that Respondent did not have rights or legitimate interests in the <danicapatrick.com> domain name, and Respondent’s registration of the domain name constituted bad faith registration and use pursuant to the Policy. Danica Racing, Inc. v. Web Master, FA 629203 (Nat. Arb. Forum Mar. 3, 2006).

 

 

Aquascape Designs, Inc. v. Vertical Axis, Inc.

 

Complainant, Aquascape Designs, Inc., brought a claim against Respondent, Vertical Axis, Inc., the registrant of the <aquascape.com> domain name. Complainant asserted common law rights in the AQUASCAPE DESIGNS mark in connection with its business as a manufacturer and distributor of water garden products and services. Respondent registered and was using the disputed domain name to operate a website providing advertising services through an arrangement with Yahoo!. Under the arrangement, Yahoo! displayed advertisements on Respondent’s website at the disputed domain name, and advertisers paid Yahoo! to have their advertisements brought to the attention of Internet users entering the word “aquascape” into their browsers. The Panel denied Complainant’s claim, finding that Respondent’s advertising activity demonstrated a legitimate interest in the <aquascape.com> domain name, and therefore Complainant had failed to demonstrate that Respondent did not have rights or legitimate interests in the <aquascape.com> domain name pursuant to Policy ¶ 4(a)(ii). The Panel also held that because the term “aquascape” is subject to substantial third party use in the field of water garden products and services, Complainant did not sufficiently establish that Respondent registered or used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). Aquascape Designs, Inc. v. Vertical Axis, Inc., FA 629222 (Nat. Arb. Forum Mar. 7, 2006).

 

 

Nike, Inc. v. LineCom

 

Athletic footwear, apparel and equipment retailer Nike, Inc. commenced an action against Respondent, LineCom, asserting that Respondent’s <mynike.com> domain name is confusingly similar to Complainant’s NIKE mark. Respondent’s disputed domain name resolved to a website offering the domain name for sale starting at the price of $3,500.  The Panel held that that Respondent’s offer to sell its domain name registration did not demonstrate rights or legitimate interests in the <mynike.com> domain name, and that Respondent registered and used the domain name in bad faith. Consequently, the Panel ordered that the domain name be transferred to Complainant. Nike, Inc. v. LineCom, FA 635471 (Nat. Arb. Forum Mar. 7, 2006).

 

 

Astaire v. Thum

 

Mrs. Fred Astaire filed a claim against Respondent, Pingtjin Thum, the registrant of the <fredastaire.net> domain name. Respondent was using the domain name to operate a website that allowed Internet users to purchase products featuring unauthorized reproductions of the FRED ASTAIRE mark and related images. In finding for Complainant, the Panel found that Complainant established common law rights in the FRED ASTAIRE mark, Respondent did not have rights or legitimate interests in the domain name, and Respondent registered and was using the disputed domain name in bad faith. Thus, the Panel ordered that the domain name be transferred to Complainant. Astaire v. Thum, FA 637404 (Nat. Arb. Forum Mar. 21, 2006).

 

 

Picture it SOLD!, Inc. v. Strathcom Media Inc.

 

Complainant, Picture it SOLD!, Inc., filed a complaint against Respondent, Strathcom Media Inc., asserting that Respondent’s <pictureitsold.com> and <pictureitsold.org> domain names were confusingly similar to Complainant’s PICTURE IT SOLD! mark. Respondent asserted that it registered the <pictureitsold.com> domain name on June 22, 1998, and the <pictureitsold.org> domain name on April 14, 2005, for the future purpose of using them for online businesses. On June 14, 2003, Respondent received an e-mail from Complainant, inquiring as to the sale of the domain names by Respondent for Complainant’s new business. Respondent refused to sell the domain names to Complainant. Soon after, Complainant began using the confusingly similar business name PICTURE IT SOLD!, and registered and began using the confusingly similar name as a service mark. The Panel held that Complainant established rights in the PICTURE IT SOLD! mark based on registration with the United States Patent and Trademark Office. However, the Panel held that Respondent had rights and legitimate interests in the domain names, because Respondent’s <pictureitsold.com> domain name was registered six years before Complainant registered its mark, and Respondent had “significant plans” for the <pictureitsold.org> domain name. Furthermore, the Panel concluded that Respondent did not register or use the disputed domain names in bad faith. Accordingly, the Panel denied Complainant’s claim. Picture it SOLD!, Inc. v. Strathcom Media Inc., FA 645998 (Nat. Arb. Forum Apr. 5, 2006).

 

 

AMVETS (American Veterans) v. Rathman

 

The federally chartered non-profit service corporation AMVETS (American Veterans) commenced a claim against Respondent, John Rathman, asserting that Respondent’s <amvetsweb.com> domain name was confusingly similar to Complainant’s federally protected AMVETS mark. Complainant, a veterans’ service organization, was created for charitable, educational and civic purposes, and provides extensive services and support to veterans of the United States Armed Forces and their families. Federal statute 36 U.S.C. Section 22706, specifically protects Complainant’s AMVETS mark by providing that AMVETS “and its State, regional, and local subdivisions have the exclusive right to use the name ‘AMVETS (American Veterans)’ and seals, emblems, and badges the corporation adopts.” Respondent registered and was using the <amvetsweb.com> domain name to redirect Internet users to a website featuring commercial content unrelated to Complainant. The Panel found that the statutory provision granting exclusive use of the AMVETS mark to Complainant demonstrated that Respondent did not have rights or legitimate interests in the <amvetsweb.com> domain name and that Respondent’s registration of the domain name constituted bad faith registration and use under the Policy. AMVETS (American Veterans) v. Rathman, FA 643637 (Nat. Arb. Forum Mar. 28, 2006).

 

 

 

E-Practice

 

 

Courts Differ on Role of Keywords in Trademark Infringement Actions

 

As published in ZDNet News, the U.S. District Court for the Southern District of New York found on March 30, 2006 that buying a competitor’s mark from an Internet search engine for use as a “keyword” does not constitute trademark infringement.

 

At issue is the practice of Internet search engines selling keywords to advertisers. When Internet users enter keywords as terms in their search, the advertisers who purchased them are listed on the search results as “sponsored links.” Trademarks are frequently purchased as keywords, because people often use trademarked brand names in search engines to find products and services.

 

In the New York case, Merck sued a number of online pharmacies for trademark infringement, trademark dilution and false advertising. One of the claims was that the pharmacies purchased the “Zocor” keyword from Google and Yahoo in order to list the pharmacies as sponsored links for searches incorporating that term. The New York court dismissed the trademark infringement charges relating to the purchase of “Zocor” as a keyword, though the other claims remain active.

 

Eric Goldman, assistant professor of law at Marquette University Law School, noted that whether the pharmacies used the mark visibly was central to the court’s decision. “The applicable statutory definition of trademark use in commerce . . . effectively requires that consumers "see" the trademark usage for it to qualify. The Merck court . . . says that keyword purchases are invisible to consumers and therefore do not constitute a trademark use in commerce.”

 

Google has had poorer luck in similar court rulings. Last year, a French court ordered Google to stop selling the trademarks of Le Meridien Hotels and Resorts to trigger keyword ads. In December 2004, a federal district judge in Virginia partially dismissed a trademark-infringement complaint brought against Google by auto insurer Geico, holding that Google was not liable for selling the “Geico” keyword, but may be liable for any “sponsored link” ads which featured the term “Geico.” Google had already begun blocking the use of the term “Geico” in such ads per Geico’s request, and the two companies settled the case before it went to trial. Courts have also decided against purchasers of keywords. On March 20, 2006, the US District Court for the District of Minnesota ruled that Edina Realty could pursue its complaint of trademark infringement against a rival realtor for buying its trademark from Google and Yahoo for use as a search term.

 

Google does not disclose how much revenue it generates by selling trademarked keywords, but approximately 99 percent of Google's revenue comes from advertising. Google derives 95 percent of its advertising revenue from keyword-triggered ads. Google decided two years ago to permit advertising sales around trademarks, a reversal of its earlier policy.

 

 

 

In The News

 

 

Amidst Linguistic Concerns, ICANN Announces Plans To Test Internationalized Domain Names

 

ComputerWorld, March 16, 2006: The Internet Corporation for Assigned Names and Numbers (ICANN) announced plans to test an internationalized system of domain names, which will use non-Roman characters or Roman characters featuring diacritical marks. At a time in which there are many concerns that linguistic differences could result in the division of the Internet, ICANN outlined two approaches to the internationalization of domain names that will be tested. One will use an alias designation for an entire domain by mapping a new domain into the one that currently exists. The second approach will insert an internationalized label in the root zone without duplicating a pre-existing sub-domain structure. The test is expected to begin later this year. Link to Full Story

 

 

“American Idol” Fan’s Website Irks Parent Company

 

Pittsburgh Tribune-Review, March 22, 2006: While the parent company of FOX’s American Idol is no doubt happy about how well the show is doing in the ratings and how well the contestants are performing each week, they are not at all pleased with one northeast Ohio man’s website at the <dialidol.com> domain name, which allows eager fans to phone in multiple votes for their favorite contestants. The website purportedly offers a free download that tells a computer to repeatedly call the American Idol hot line for a chosen contestant. The website’s operator then calculates the data to see who won each week and posts the results before the live show on Wednesday night. The company’s lawyers sent a cease-and-desist letter to the operator on March 14, 2006, accusing him of displaying the AMERICAN IDOL mark on his website and allowing Internet users to download clips from the show. The operator claims that he never offered audio or video clips and that he is not out to make a profit from the website, but did take down the site for about a week. The operator has since restarted the website, albeit with a modified logo and a disclaimer stating that it is not affiliated with American Idol. It remains to be seen if the company behind American Idol will decide to let this case slide or whether it will take further action. Link to Full Story

 

 

The “.nu” Domain Sparks Battle On Tiny South Pacific Island

 

Post-Gazette.com, March 29, 2006: On the tiny South Pacific island Niue, a battle has raged over the national Internet suffix “.nu,” reports Christopher Rhoads of The Wall Street Journal. The “.nu” domain, which is operated by Massachusetts entrepreneur Bill Semich, has become very popular in Sweden, as “nu” in Swedish translates into the word “now.” With 110,000 domain names registered using the “.nu” domain, Mr. Semich generates revenue “in the low single digit millions” of dollars every year. However, this success has not left everyone happy. Some government officials of the impoverished Polynesian island feel cheated out of what they see as an important and profitable national asset. Although Mr. Semich has voluntarily undertaken a project to make Niue the first nation to offer all of its citizens free wireless Internet access, the island’s government is demanding a bigger slice of the domain’s profits and a higher level of control. The dispute incited a nearly three-year independent government investigation and became the focal point of local political elections. Although the investigation failed to uncover any improper behavior on the part of Mr. Semich, the recently elected Niue Premier, Mititaiagimene Young Vivian, plans to continue talks with Mr. Semich regarding the future of the “.nu” domain. "The key issue is that reasonable benefits should come to Niue," he says. "That is the goal of any leader." Link to Full Story

 

 

Charities Benefit from Domain Name Gifts

 

International Herald Tribune, March 30, 2006: Instead of selling the <farm.com> domain name for hundreds of thousands of dollars, a Massachusetts-based entrepreneur donated the domain name to the Boston Foundation, a non-profit organization, who later sold the domain name to Pets United for $200,000. While some people might think such a move is crazy, there are a growing number of people who are registering domain names and donating them to charities. There are several reasons why a person might donate a domain name to a non-profit group, one of them being for tax purposes, as domain name donors receive a large tax credit for their charitable contribution. One New York man, however, registered 107 education-related domain names and gave them to his alma mater, Prescott College in Arizona, to get the school more attention. People typing “best liberal arts school” and “top American university” into a search engine see links for the school, thus creating a great marketing tool for the college. Link to Full Story

 

 

Porn Domain Stirs ICANN Pot

 

Computer Business Review Online, April 3, 2006: While ICANN has yet to decide whether to approve the “.xxx” top-level domain for adult-only content, ICANN President Paul Twomey stated that the debate has led him to realize that future proposals for TLDs should also be subject to close scrutiny. ICANN is currently considering whether new TLDs should be subject to oversight and debate before approval, or if instead there should be a simple checklist of requirements. Twomey, however, prefers the former, stating, “Because of the issues .xxx has raised, I just can’t see a cookie-cutter approach. It’s too complicated, too complex, too many issues are raised.” Florida-based ICM Registry Inc is aggressively pushing the .xxx TLD. It wants to create the online equivalent of a “clean, well-lighted sex shop.” ICANN’s Government Advisory Committee elaborated on the debate during its recent meeting in Wellington, New Zealand by publishing a list of its members' concerns, which included protecting vulnerable members of the Internet community and appropriating measures to restrict access to illegal and offensive content. Link to Full Story

 

 

Name.Com To Partner with Sedo To Provide “One-Stop Shop” for Domain Name Needs

 

BusinessWire, April 4, 2006: Name.com, a leading domain name registration company, and Sedo, the leading online marketplace for buying and selling domain names, have created a partnership which allows Internet users to instantly bid on Sedo’s domain name listings. When Name.com users search for the availability of various domain names, the results will not only search the primary domain name market, but also the results will show whether the domain in question is available for sale in the secondary markets. Both companies hope that the integration will increase new registrations and renewals while opening up new channels of business. Name.com sees this as yet another step in becoming “a one-stop shop for all domain name needs.” Link to Full Story

 

 

 

Upcoming events

 

 

April 19-21, 2006

Name Intelligence offers its second annual Domain Roundtable.

Bellevue, WA

May 3-5, 2006

American Intellectual Property Law Association (AIPLA) offers its 2006 Spring Meeting.

Chicago, IL

May 6-10, 2006

International Trademark Association (INTA) offers its 2006 Annual Meeting.

Toronto, Ontario, Canada

 

 

Let the National Arbitration Forum know of your upcoming events for listing in Domain-News. Send event listing information to: domain-news@arb-forum.com. Please type "DOMAIN NEWS EVENTS" in the subject header.

 

back to top

 

To file a domain name dispute resolution claim, see www.arbitration-forum.com/domains. Questions regarding domain name dispute resolution or e-commerce arbitration may be directed to info@arb-forum.com. If for any reason you would like to unsubscribe, e-mail us at domain-news@arb-forum.com. Simply write the word "UNSUBSCRIBE" in the subject header.

 

Note: The information found in this newsletter is designed to provide accurate and authoritative information regarding the subject covered, but is not intended as legal advice.