Your Source for Domain Dispute News and Information Thursday, September 14, 2006, Vol. 7 No. 09
 

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.adrforum.com.

 

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In This Issue

 

 

Abbott Labs v. Patel

 

Department of Commerce Extends Agreement With ICANN

 

Microsoft Takes Aggressive Approach to Cybersquatters

 

Politics Over Domain Names in California

 

 

 

Recent Decisions

 

 

Ticketmaster Corp. v. Kumar

 

Complainant, Ticketmaster Corp., filed a claim under the UDRP against Respondent, Senthil Kumar, in connection with Respondent’s registration of the <indiaticketmaster.com> domain name. The Panel found that the addition of the geographic term “india” and the generic top-level domain “.com” did not prevent the creation of confusing similarity between Respondent’s domain name and the TICKETMASTER mark in which Complainant had established rights under Policy ¶ 4(a)(i). Furthermore, the Panel held that the term “ticketmaster” did not constitute a generic term that described a legitimate activity, and thus Respondent lacked rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). Lastly, the Panel concluded that in light of the fame surrounding Complainant’s mark within the United States, where Respondent resides, as well as Respondent’s use of the <indiaticketmaster.com> domain name to operate a website offering searches related to Complainant’s business, Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). Consequently, the Panel ordered the transfer of the <indiaticketmaster.com> domain name to Complainant. Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006).

 

 

Yahoo! Inc. v. Butler

 

Complainant, Yahoo! Inc., initiated a proceeding against Respondent, Craig Butler, holder of the domain name registrations for the <yahooanswers.com>, <yahooanswers.info>, <yahooanswer.com>, and <yahooanswers.net> domain names. In ordering the transfer of the domain names from Respondent to Complainant, the Panel held that Complainant had established all three elements required under Policy ¶ 4 of the UDRP. Specifically, the Panel found that Respondent’s disputed domain names were confusingly similar to Complainant’s YAHOO! mark pursuant to Policy ¶ 4(a)(i), as the addition of the common terms “answer” or “answers” did not sufficiently differentiate any of the domain names from Complainant’s registered mark. Furthermore, the Panel concluded that Respondent’s use of the disputed domain names to operate a website offering a fee-based informational advice service and displaying pay-per-click advertisements demonstrated that Respondent selected the disputed domain names in order to take advantage of the goodwill inherent in Complainant’s mark. Therefore, the Panel held, Respondent failed to establish that it had rights or legitimate interests with respect to the <yahooanswers.com>, <yahooanswers.info>, <yahooanswer.com>, and <yahooanswers.net> domain names in accord with Policy ¶ 4(a)(ii). As a result of Respondent’s attempts to capitalize on the confusing similarity between its domain name registrations and Complainant’s well-known mark, the Panel also determined that Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iv). Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006).

 

 

Abbott Labs v. Patel

 

Global healthcare company Abbott Laboratories, Complainant, initiated a claim against Kumar Patel, Respondent, with regard to Respondent’s <abbott-laboratories.com> domain name. According to both parties in the dispute, Respondent’s domain name resolved to a website devoted entirely to criticism of Complainant and displaying Complainant’s ABBOTT LABORATORIES mark. In its Response, Respondent argued that its use of Complainant’s mark in the operation of a criticism website constituted a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), especially in light of Respondent’s use of a disclaimer of any affiliation with Complainant on Respondent’s website. However, the Panel found that Respondent’s use of Complainant’s entire mark in order to cause initial interest confusion among Internet users did not constitute a noncommercial or fair use under Policy ¶ 4(c)(iii), notwithstanding Respondent’s use of the domain name to operate a criticism website. Moreover, the Panel concluded that Respondent’s registration and use of the <abbott-laboratories.com> domain name to initially confuse Internet users, as well as Respondent’s knowledge of Complainant’s rights in the ABBOTT LABORATORIES mark, demonstrated that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). Accordingly, the Panel ordered the transfer of the disputed domain name registration to Complainant. Abbott Labs. v. Patel, FA 740337 (Nat. Arb. Forum Aug. 15, 2006).

 

 

The Neiman Marcus Group, Inc. and NM Nevada Trust v. Faith McGary

 

Complainant, The Neiman Marcus Group, Inc. and NM Nevada Trust, filed a claim against Respondent, Faith McGary, seeking the transfer of the <neimanmarcusmobile.info> and <neimanmarcusonline.info> domain names. The Panel found that the disputed domain names were clearly confusingly similar to Complainant’s NEIMAN MARCUS mark, as they each combined a generic term with Complainant’s mark. The Panel also found that Respondent’s forwarding of the disputed domain names to Complainant’s website, as well as Respondent’s previous indications that she was willing to sell the disputed domain names to Complainant, demonstrated that Respondent had no rights or legitimate interests in the disputed domain names, but rather that they were registered and used in bad faith by Respondent for her own commercial gain through the sale of the domain names. The Panel decided to transfer the <neimanmarcusmobile.info> and <neimanmarcusonline.info> domain names from Respondent to Complainant. The Neiman Marcus Group, Inc. and NM Nevada Trust v. Faith McGary, FA 757475 (Nat. Arb. Forum Aug. 22, 2006).

 

 

Terminal Supply, Inc. v. HI-LINE ELECTRIC

 

Complainant, Terminal Supply, Inc., brought a claim against Respondent, HI-LINE ELECTRIC, for Respondent’s registration of the <terminalsupply.com> domain name. The Panel found that Complainant’s trademark, TERMINAL SUPPLY CO. SINCE 1966, though registered by the United States Patent and Trademark Office, was registered specifically as a stylized mark and that on the trademark application Complainant acknowledged no rights apart from the specific stylized mark. Therefore, the Panel found, Complainant did not have exclusive rights to the terms “terminal supply.” The Panel also found that Respondent’s disputed domain name was registered prior to Complainant’s registered trademark rights, and that Respondent had rights and legitimate interests in the disputed domain name, and that it was not registered in bad faith. The Panel thus denied Complainant’s request to transfer the <terminalsupply.com> domain name. Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006).

 

 

 

E-PRACTICE

 

 

Department of Commerce Extends Agreement With ICANN

 

The Department of Commerce has extended its agreement with ICANN regarding the administrative control over the functions of the Internet Assigned Numbers Authority (IANA). The new agreement will commence on October 1, 2006, upon the expiration of the original Memorandum of Understanding. The duration of the new agreement is set for one year of service with optional annual extensions for up to four additional years. In an ICANN press release, Dr. Paul Twomey, President and CEO of ICANN, stated, “In executing this contract the Department of Commerce has confirmed that ICANN is uniquely positioned to perform this function.”

 

In addition to the extension of its control over the Internet’s domain name system, ICANN is contemplating an interesting change in the proposed registry agreements for the .ORG, .INFO and .BIZ generic top-level domains. On September 13, 2006, the ICANN Board of Directors will review public commentary regarding the proposed registry agreements that would not prevent registry operators from charging different prices for the registration or renewal of domain names on a domain-by-domain basis. In other words, the proposed agreements would allow a registry operator to set a registration or renewal price based upon what it believes the domain name to be worth. More information and developing commentary on this topic is available at CircleID.com.

 

 

 

In The News

 

 

Microsoft Takes Aggressive Approach to Cybersquatters

 

InternetNewsBureau.com, August 23, 2006: Microsoft has filed three lawsuits against cybersquatters under the Anticybersquatting Consumer Protection Act of 1999 (“ACPA”). The Act allows Microsoft to seek up to $100,000 in damages if it prevails in a court proceeding. The first civil lawsuit is against three men who allegedly hold 324 domain names containing Microsoft trademarks. The second suit involves a man from Long Beach, California, who allegedly registered eighty-five domain names that “directly target Microsoft.” The final suit seeks relief against 217 “John Does” using privacy protection services to protect their identities. Microsoft hopes that these lawsuits will curtail other cybersquatters from registering domain names featuring its famous Microsoft trademarks. Link to Full Story

 

 

Politics Over Domain Names in California

 

St. Paul Pioneer Press, August 25, 2006: The battle over Proposition 87, a California initiative that would impose a fee on oil extracted from the state, has taken to the web. Backers of the initiative, “Yes on 87,” registered a number of domain names, including <noonprop87.org> and <noon87.com>, and connected the domain names to websites in support of the Proposition. The opposition, however, has decided to strike back. Under the California Political Cyberfraud Abatement Act, the California legislature has prohibited just such tricks. Parties opposing Proposition 87 instituted a suit against Yes on 87 in an effort to gain control of the disputed domain names. Proposition 87’s Campaign Manager has reportedly sent letters to several heads of major oil companies offering the exchange of the domain names in return for the full disclosure of their involvement in opposing the November initiative. While no official agreements have been announced, the opposing sides have been locked in discussions over the future of the disputed domain names. Link to Full Story

 

 

Domain Name Registration Controversy in Vietnam

 

Vietnam.net, August 28, 2006: In the recent rush following the Vietnam Internet Centre’s opening up of the “.vn” top-level domain for general registration, many domain names including the marks of famous local and foreign brands have been registered by individuals or companies unrelated to the famous brands. For example, the <bankofamerica.vn> domain name was registered by Investment Co., Ltd, a local Vietnamese company. Many companies are concerned that they will be forced to purchase domain names containing their marks on the open market. The domain name registrations were allowed on a first come, first serve basis. It remains to be seen whether the new regulations for resolving domain name disputes put into effect in September 2005 will be sufficient to solve the inevitable domain name disputes. Link to Full Story

 

 

Web Development Company Launches New Domain Name Generator

 

PRWeb, August 29, 2006: A New York-based web development company, Acceli Web Solutions, announced the launch of a new domain name suggestion tool at <makewords.com> that allows Internet users to search for unregistered domain names using several different methods, including a random phonetic word generator, a synonym search, and popular affixes. The idea of creating a domain name generator was born out of Acceli’s own search for a company name. “At some point almost everyone needs to come up with a name for their startup business, personal website or blog,” Tauno Novek, Chief Operating Officer of Acceli, stated. “We faced the same question when we were looking for a name for our company. That's when the idea about the domain name generator was conceived.” Acceli Web Solutions built the new domain name search engine using Microsoft’s new Atlas framework. Link to Full Story

 

 

Potential Disaster Sparks Flurry of Registrations

 

WebProNews, August 30, 2006: While most people were relieved to hear that Ernesto was no longer a storm with hurricane force winds, the domain registrants hoping to take advantage of the storm were probably disappointed. Domain name registrants hoping to profit from the potential disaster took advantage of ICANN’s five-day return policy in order to register Ernesto-related domain names, including <ernestohurricane.com>, <ernestodamge.com> and <ernestoweather.com>. Similar registrations occurred in the wake of Hurricane Katrina. The opportunistic registration of disaster-related domain names is part of a larger trend in which domain name registrants register names, park them for links, and then return them within the five-day return period. Link to Full Story

 

 

 

Upcoming events

 

 

October 19-21, 2006

American Intellectual Property Law Association (“AIPLA”) Annual Meeting

Washington, D.C.
December 2-8, 2006

ICANN Meeting
Sao Paulo, Brazil

 

 

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

 

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