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Your Source for Domain Dispute
News and Information |
Thursday,
September 14, 2006,
Vol. 7 No. 09 |
Welcome to Domain-News, a complimentary
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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. |
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December
2-8, 2006 |
ICANN Meeting
Sao Paulo, Brazil |
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