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Your Source for Domain Dispute
News and Information |
Wednesday,
January 24, 2007,
Vol. 8 No. 01 |
Welcome to Domain-News, a complimentary
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In
This Issue
June Bug Enterprises, Inc. v. myspecialprice.com
Critics Grow as “Domain Tasting” Becomes More Prevalent
“.Bank” Has Potential to Foil Phishers
Origins of a Manatee Humor Homepage
Recent
Decisions
Audio-Digest Foundation v. Administrative
Contact
Complainant, Audio-Digest
Foundation, initiated a complaint against Respondent, Administrative
Contact, regarding Respondent’s <nursedigest.com> domain name. The
Panel found that the disputed domain name was confusingly similar to
Complainant’s NURSES-DIGEST trademark, which Complainant uses to market
continuing medical education courses in audio form. Despite Respondent’s
contention that it was not using the disputed domain name for goods and
services in competition with Complainant because Respondent does not sell
audio materials, the Panel found that both Complainant and Respondent were
in the business of educating nurses, and thus Respondent lacked rights and
legitimate interests under Policy ¶ 4(a)(ii). The Panel further found bad
faith registration and use under Policy ¶ 4(a)(iii), and thus transferred
the <nursedigest.com> domain name from Respondent to Complainant.
Audio-Digest Foundation v. Administrative Contact, FA 839805 (Nat.
Arb. Forum Dec. 28, 2006).
Hugo Daniel Barbaca Bejinha v. Whois Guard
Protected
Complainant, Hugo Daniel Barbaca
Bejinha, filed a claim under the UDRP against Respondent, Whois Guard
Protected, registrant of the <globalchip.org> domain name.
Complainant asserted that the disputed domain name was identical to its
GLOBALCHIP mark under Policy ¶ 4(a)(i). Complainant asserted common law
rights in the mark based on its previous ownership of the disputed domain
name, which Complainant contended it utilized for the sale of various gaming
products. However, the Panel found that Complainant failed to provide
sufficient evidence of secondary meaning associated with the mark such that
Complainant would have acquired common law rights in the GLOBALCHIP mark
prior to its failure to renew the <globalchip.org> domain name
registration. The Panel thus found that Complainant had failed to provide
sufficient common law rights in the mark under Policy ¶ 4(a)(i), and
accordingly denied to transfer the <globalchip.org> domain name to
Complainant.
Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538
(Nat. Arb. Forum Dec. 28, 2006).
June Bug Enterprises,
Inc. v. myspecialprice.com
Complainant, June Bug
Enterprises, Inc., brought a claim against Respondent, myspecialprice.com,
for Respondent’s registration of the <magicjohnsontravelgroup.com>
domain name. The Panel found that Complainant had established rights in the
MAGIC JOHNSON mark through several trademark registrations with the United
States Patent and Trademark Office (“USPTO”) and had also established rights
in the MAGIC JOHNSON TRAVEL GROUP mark through three intent-to-use service
mark applications with the USPTO, as well as Complainant’s public marketing
of the mark. The Panel found that the disputed domain name was confusingly
similar to the MAGIC JOHNSON mark and identical to the MAGIC JOHNSON TRAVEL
GROUP mark, and thus Complainant satisfied Policy ¶ 4(a)(i). The Panel found
that Respondent was using Complainant’s marks to attract Internet users to
Respondent’s website for Respondent’s commercial benefit, and thus had no
rights or legitimate interests in the <magicjohnsontravelgroup.com>
domain name. The Panel also found bad faith registration and use, as
Respondent admitted to being aware of Complainant’s marks, and had
registered the disputed domain name days after the public announcement of
the MAGIC JOHNSON TRAVEL GROUP, which the Panel held constituted
opportunistic bad faith. The Panel decided to transfer the disputed domain
name from Respondent to Complainant.
June Bug Enters., Inc. v. myspecialprice.com, FA 833078 (Nat. Arb.
Forum Dec. 27, 2006).
LD Products, Inc. v. Total Sales USA, Inc.
Complainant, LD Products, Inc.,
commenced an action against Respondent, Total Sales, USA, Inc., for the <fourinkjet.com>
domain name. Complainant asserted rights in the 4INKJETS mark, but the Panel
found that the disputed domain name was not confusingly similar to
Complainant’s mark under Policy ¶ 4(a)(i). The Panel found that the
difference of deleting the “s” from the end of Complainant’s mark, as well
as the difference between “four” and “4,” rendered Respondent’s disputed
domain name sufficiently distinct from Complainant’s mark. The Panel further
found that Respondent’s offering of toner and inkjet related goods on the
website located at the <fourinkjet.com> domain name was a bona
fide offering of goods and services and thus Respondent did not register
the disputed domain name in bad faith. Having failed to establish the
elements as required by the UDRP, the Panel declined to transfer the
disputed domain name from Respondent.
LD Products, Inc. v. Total Sales USA, Inc., FA 832392 (Dec. 22,
2006).
Skype Limited v. Jan Jensen
Complainant, Skype Limited, filed a
claim against Respondent, Jan Jensen, seeking the transfer of the <skype.us>
and <skypeshop.us> domain names. The Panel found that Complainant had
rights in the SKYPE trademark through registration with the United States
Patent and Trademark Office, as well as common law rights through several
years of continuous use of the mark. However, regarding the <skype.us>
domain name, the Panel found that Respondent’s registration pre-dated
Complainant’s use and rights in the mark, and Complainant accordingly failed
to meet its burden under Policy ¶ 4(a)(i). In contrast, Complainant
established sufficient rights in the SKYPE mark that pre-dated the
registration of the <skypeshop.us> domain name, and thus satisfied
Policy ¶ 4(a)(i) with regard to that domain name. The Panel continued its
analysis of the <skypeshop.us> domain name under Policy ¶ 4(a)(ii),
finding Respondent lacked rights and legitimate interests in the disputed
domain name, and under Policy ¶ 4(a)(iii) it found bad faith registration
and use. Accordingly, the Panel rendered a split decision, denying the
transfer of the <skype.us> domain name, but agreeing to the transfer
of the <skypeshop.us> domain name.
Skype Ltd. v. Jensen, FA 842091 (Nat. Arb. Forum Dec. 26, 2006).
SmartGene GmbH v. 4You Net Services
Complainant, SmartGene GmbH,
commenced an action under the UDRP against Respondent, 4You Net Services, in
regard to Respondent’s <smartgene.com> domain name registration. The
Panel found that the disputed domain name was identical to Complainant’s
SMARTGENE mark under Policy ¶ 4(a)(i). Additionally, the Panel found that
Respondent had failed to provide evidence that it was commonly known by the
disputed domain name, and that Respondent’s failure to make an active use of
the <smartgene.com> domain name, as well as Respondent’s offers to
sell it, did not give Respondent rights or legitimate interests in the
disputed domain name. The Panel also found bad faith registration and use on
the part of Respondent, as Respondent had not made an active use of the
disputed domain name in over eight years of registration, and had offered to
sell the disputed domain name for $55,000, an amount in great excess of
out-of-pocket expenses incurred. Accordingly, the Panel ordered the transfer
of the <smartgene.com> domain name from Respondent to Complainant.
SmartGene GmbH v. 4You Net Services, FA 820359 (Nat. Arb. Forum Dec.
6, 2006).
E-PRACTICE
Critics Grow as “Domain Tasting” Becomes More
Prevalent
“Domain tasting” commonly refers to a practice in which
domain name registrars use a five-day grace period to test the marketability
of domain names without incurring the usual charges from the Registry.
Specifically, the registrar can gauge the amount of traffic generated by
commonly misspelled domain names, and subsequently delete the ones which are
less visited at the end of the grace period in order to avoid registration
fees. The five-day grace period is governed by the
Internet Corporation for Assigned Names and Numbers (ICANN), which
originally created this policy with the intent to provide registrars with a
recourse in case a domain name was accidentally misspelled during
registration.
However, some companies have attacked the policy as
inadequate because they claim that the practice of domain tasting goes far
beyond its policy’s intentions. Retailers Neiman Marcus and Bergdorf Goodman
have alleged in a federal lawsuit that domain name registrar
Dotster is using the policy to determine which commonly misspelled
domain names are visited most often in order to maximize profits generated
from cybersquatting. The lawsuit has yet to be resolved.
In response to this growing concern, ICANN adopted an
amendment to its
.org Registry Agreement with the
Public Interest Registry on November 22, 2006 that authorized an excess
deletion fee on certain “.org” domain names. Some have applauded ICANN for
these efforts, while others have criticized ICANN for the limited scope of
this amendment. Some large domain name registrars such as
GoDaddy.com, which recently teamed up with Google and
eNom to sell addresses ending in “.com,” “.net,” “.biz,” and “.info,”
have verbally and in writing called for further change to ICANN’s policy.
Approximately
4 million domain names are currently tasted in any given day according to
Jay Westerdal, CEO of the domain consultancy firm
Name Intelligence, and the practice continues to increase. This issue is
likely to remain hotly debated for quite some time.
In
The News
“.Bank” Has Potential to Foil Phishers
The Guardian, Dec. 7, 2006: With losses from “phishing”
schemes on the rise, experts are calling for top-level domain names such as
“.bank” or “.secure” as potential solutions. “Phishing” occurs when Internet
users receive an email claiming to be from their bank, or follow a link to a
website that appears to be that of their bank, and then fill in personal
information including passwords. That information is then used for
fraudulent purposes. Domain names are a key tool for those engaged in
phishing schemes, since domain names similar to the genuine domain names of
banks are readily available. Examples include <barclays-bankcard.co.uk>, <muvisacard.eu>
and <hsbcgroupuk.com>, all of which look genuine to many Internet users.
Since generic top-level domains such as “.com” and “.net” are easy to
register, some experts suggest creating new top-level domains, such as
“.bank” or “.secure,” that would be authorized by some sort of oversight
organization. Currently, the “.museum” top-level domain operates in this
way, requiring applicants to verify their membership in the museum
community. For the time being, banks continue to use dispute resolution
services to go after infringing domain registrations, but Internet users
should be aware that phishing remains a problem and should exercise caution
in disseminating personal information.
Link to Full Story
Origins of a Manatee
Humor Homepage
International Herald Tribune, Dec. 12, 2006: The
December 4 installment of the television program “Late Night With Conan
O’Brien” included a skit portraying outrageous sports-team mascots,
including a joke about the “Webcam manatee,” supposedly the mascot of FSU.
While the “Webcam manatee” (someone in a manatee costume) danced
provocatively, Conan O’Brien ad-libbed a line mentioning that the manatee
was being watched at <hornymanatee.com>. While no such website existed as of
the taping of the show, NBC quickly paid $159.00 to purchase the domain
name. NBC’s decision to purchase the domain name was motivated by the fear
that a viewer might acquire the domain name and put something inappropriate
on it, potentially exposing NBC to liability for appearing to promote the
website. O’Brien was offered the choice between removing his mention of the
domain name or purchasing it and asked that NBC purchase the domain name
registration. As it turns out, the website located at the <hornymantee.com>
domain name, which O’Brien and his staff helped to create, has received over
three million hits since its creation. Viewers have also submitted their own
artwork and other material to the website.
Link to Full Story
Island of Misfit Country Codes
E-Commerce Times, Dec. 7, 2006: The Internet
Corporation for Assigned Names and Numbers (“ICANN”) is seeking public
comments on strategies for revoking outdated top-level domains, in
particular those assigned to countries that no longer exist. Just as new
top-level domains such as “.eu”, “.travel,” and “.asia” are coming into
their own, there are questions about how best to deal with top-level domains
made obsolete by geo-political change. The Soviet Union’s “.su” is one
top-level domain name slated for deletion, and it is not alone. Yugoslavia,
having split into Serbia and Montenegro, is transitioning away from the
“.yu” country code. Despite these changes, a Google search generates
millions of “.su” and .yu” websites. Other obsolete country codes have
disappeared, such as East Germany’s “.dd,” while Zaire’s “.zr” was replaced
with “.cd” after the country became the Democratic Republic of Congo.
Link to Full Story
Actor DeNiro Claims Trademark Violation
New York Post, December 31, 2006: Actor Robert DeNiro
has sent a cease-and-desist letter to the owner of the community arts
website <tribeca.net>, claiming he owns common-law rights in the TRIBECA
mark. DeNiro, who founded the Tribeca Film Festival in 2002, was a co-owner
of a restaurant named Tribeca Grill in 1990. Chuck Harris, the registrant of
the <tribeca.net> domain name, registered the domain name in 1995 and just
recently got the website off the ground. DeNiro’s attorneys are claiming
that the TRIBECA name has developed extraordinary secondary meaning and is
closely associated with DeNiro’s goods and services. Community members that
contribute to the content of the website at the <tribeca.net> domain name
claim that DeNiro is being a “bully,” and that the website is a
community-driven, “grass-roots” website embodying the “spirit of what
Tribeca is supposed to be.” In addition to claiming that the website
infringes on his protected trademark, DeNiro is demanding that Harris
provide a full accounting of all the revenue generated by the website.
Link to Full Story
Google Launches Domain Name Registration
Service
TechTree.com, December 18, 2006: Google, the well-known
Internet search provider, has launched a domain name registration service
called Google Apps For Your Domain (“GAFYD”). Google has partnered with
domain name registration companies GoDaddy and eNom to form GAFYD. The
company plans to sell registrations for $10 per year, and the service will
support “.com,” “.net,” “.org,” “.biz” and “.info” generic top-level
domains. Internet sites that register domain names using GAFYD will be
automatically positioned to utilize several other Google products, such as
Gmail, Google Talk instant messaging, Google Page Creator, and will provide
a Start Page for creating a home page. GAFYD seeks to extend Google’s
private-label calendar, email, and instant messaging services to more
Internet users. Previously, if customers wished to use GAFYD, they would
have had to have a domain name. With the launch of the new registration
service, Google is expanding to serve customers who do not have a domain
name.
Link to Full Story
Domain Name Industry to Receive First Print
Magazine
DomainNameWire.com, December 28, 2006: Domainer’s Magazine, a new print
magazine devoted to the growing domain name industry, will launch its
introductory issue in January 2007. There are currently no print
publications devoted to the burgeoning industry, and the magazine seeks to
fill that void. The magazine will be published bi-monthly and the first
issue will be distributed to 5,000 people. The magazine will include regular
features such as “Domainer’s Toolbox,” a guide to tools available to assist
domainers in day-to-day business activities, “Spotlight,” a chance for
leading innovators in the industry to share ideas, “Hardware Review,” a
source for reviews of new computer hardware products, “Gadget Corner,” a
technology article featuring the magazine’s resident expert reviewing new
products, and “Domainer’s Legal,” a feature presenting articles by various
attorneys in the field addressing legal issues within the domain name
industry.
Link to Full Story
Upcoming
events
|
January
24-27, 2007 |
American Intellectual Property Law Association’s
Mid-Winter Institute
New
Orleans, LA |
|
January
26-27, 2007 |
Cyberspace Law Committee (Business Law Section,
American Bar Association) sponsors its annual Winter Working Group
meeting
Little
Rock, AR |
|
February
9-11, 2007 |
ABA
Intellectual Property Law Section Midwinter Meeting
Miami,
Florida |
Let
the National
Arbitration Forum know of
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