Your Source for Domain Dispute News and Information June 8, 2007, Vol. 8 No. 06

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In This Issue



Courtney Love v. Brook Barnett


Report Shows Cybersquatting is Increasing Substantially


GoDaddy Takes Over RegisterFly Domain Names Domain Name Sells for $9.5 Million




Recent Decisions



AOL LLC v. AIM Profiles


Complainant, AOL LLC, filed a UDRP complaint against Respondent, AIM Profiles, over control of the <> domain name. The Panel found that the addition of the term "profiles" to Complainant's well-known AIM trademark did not sufficiently distinguish the disputed domain name from Complainant's mark within the parameters of Policy 4(a)(i). Additionally, Respondent's use of the <> domain name in association with services offered under Complainant's AIM mark, even after Respondent's receipt of a cease-and-desist letter from Complainant, demonstrated that Respondent lacked rights and legitimate interests in the domain according to Policy 4(a)(ii). The Panel also found various examples of bad faith registration and use, including attempts to profit from the content of the website that resolves from the disputed domain name, and Respondent's admitted offer to sell the disputed domain name registration. Having found that Complainant satisfied all three elements of Policy 4(a), the Panel ordered the transfer of the <> domain name to Complainant. AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007).



Courtney Love v. Brook Barnett


Complainant, Courtney Love, brought a claim under the UDRP against Respondent, Brook Barnett, for the <> and <> domain names. Complainant alleged common law rights in the KITTYRADIO mark as a mark associated with Complainant's music career, and common law rights in the KURT COBAIN mark through her status as the late musician's widow. Respondent contended that she had registered and developed the disputed domain names with Complainant's full knowledge and cooperation. The Panel found that the parties presented vastly different factual scenarios, and that there was not enough information available to judge which presentation was more credible. Moreover, the Panel noted that the UDRP was not designed to deal with contractual disputes such as this, but rather to protect trademark owners "from people who abuse the domain name system..." As there was no evidence of trademark ownership by either party from an official governmental entity, and not enough evidence from either party to establish common law rights in lieu of governmental registration, the dispute was accordingly found to be outside the parameters of the UDRP. The Panel thus dismissed the Complaint. Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007).



Constellation Wines U.S., Inc. v. Texas International Property Associates


Complainant, Constellation Wines U.S., Inc., filed a claim against Respondent, Texas International Property Associates, for Respondent's registration of the <> domain name. The Panel rejected Respondent's argument that the term "blackstone," as applied to wine, was a generic designation. Instead the Panel found the disputed domain name to be confusingly similar to Complainant's BLACKSTONE mark, because adding the descriptive term "wine," which describes Complainant's business, did not sufficiently differentiate the domain name under Policy 4(a)(i). The Panel also found that Respondent's operation of a website containing links and advertisements to products and services unrelated to Complainant did not constitute a bona fide offering of goods or services pursuant to Policy 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii). The Panel further found bad faith registration and use under Policy 4(a)(iii), because Respondent was profiting from the goodwill associated with Complainant's mark. Accordingly, Complainant's request for a transfer of the <> domain name was granted. Constellation Wines U.S., Inc. v. Tex. Int'l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007).



Occidental Hoteles Management, S.A., and Corcital II, S.A. v. Hargrave Arts, LLC


Complainant, collectively Occidental Hoteles Management, S.A., and Corcital II, S.A., filed a claim against Respondent, Hargrave Arts, LLC, regarding the <> domain name. Although Complainant alleged to have operated forty-six hotels and resorts in Spain under the OCCIDENTAL mark since 1982, the Panel found insufficient evidence to support a claim of rights in the OCCIDENTAL mark either through a trademark registration or continuous and extensive use. In light of Respondent's evidence showing that Complainant's USPTO registration of the OCCIDENTAL mark was cancelled on July 3, 2000, the Panel found that Complainant failed to satisfy the requirements of Policy 4(a)(i), thus rendering any analysis of the other two elements required under the ICANN Policy unnecessary. Accordingly, Complainant's request for a transfer of the disputed domain name was denied. Occidental Hoteles Mgmt., S.A., & Corcital II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007).



T.R. World Gym-IP, LLC v. William D'Addio


Complainant, T.R. World Gym-IP, LLC, instituted a UDRP action against Respondent, William D'Addio, over control of the <> domain name. The Panel found that Complainant had established rights in the WORLD GYM mark sufficient to satisfy Policy 4(a)(i). The Panel also found that Respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the <> domain name under Policy 4(a)(ii), because the disputed domain name featured no content except for the words "coming soon" and a picture of a person exercising. The Panel also found bad faith registration and use under Policy 4(a)(iii), because prior to the "coming soon" page, which the Panel did not deem to be true and legitimate content, Respondent offered the disputed domain name registration for sale as "one of the most popular names and website in the fitness industry." Consequently, the Panel ordered the transfer of the <> domain name from Respondent to Complainant. T.R. World Gym-IP, LLC v. D'Addio, FA 956501 (Nat. Arb. Forum May 22, 2007).



Telecom Italia S.p.A. v. NetGears LLC c/o Domain Admin


Complainant, Telecom Italia S.p.A., filed a claim against Respondent, NetGears LLC c/o Domain Admin, regarding the <> domain name. As Complainant provided no evidence of the official trademark registration upon which it relied, the Panel refused to find the <> domain name confusingly similar to any of Complainant's marks in connection with its telephone services, as no fair comparison could be made. Furthermore, the Panel found Complainant failed to establish even common law rights in the generic 187 mark. Although no further analysis was required once the Panel found that Complainant failed to establish rights in the 187 mark as required by Policy 4(a)(i), the Panel stated further that Respondent had rights and legitimate interests in the disputed domain name, as its registration predated any of Complainant's alleged marks, and it was used for the legitimate purpose of providing links to music, videos and other references to the "Police Code 187." For this reason, the Panel also determined that Respondent could not have registered and used the disputed domain name in bad faith. Accordingly, Complainant's request to transfer the disputed domain name was denied. Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007).







Report Shows Cybersquatting is Increasing Substantially


MarkMonitor, a San Francisco-based company providing online brand and Internet fraud protection, released its first quarterly brandjacking report on April 30, 2007. The report details the increasing amount of cybersquatting the term for the registration of a domain name that infringes upon or otherwise violates the rights of a trademark holder and other brand use violations. MarkMonitor and some others in the industry are specifically referring to this as "brandjacking," in which Internet users infringe upon the registered trademarks of businesses in order to advertise their own products. The concern of most trademark holders is that these violations potentially lead to brand dilution of the products and services that they market under their trademarks.


The report, based on an examination of twenty-five of the world's strongest brands over a four-week period, indicates that cybersquatting increased by 248% in 2006. MarkMonitor's study "found more than 286,000 instances of cybersquatting for the 25 brands it studied," averaging 11,400 instances per brand. Well-trafficked media websites, which constituted 31% of the reported instances, as well as financial services websites, appear to be the most attractive targets of cybersquatters.


Similar results were found when looking at other types of violations, including phishing, tasting (also known as kiting), and pay-per-clicks. Financial institutions are significantly impacted by both phishing and kiting; they represent 41% of all phishing instances and constitute the majority of all documented tastings. The report indicated that pay-per-click sites alone have provided about $125 million in profits to "cyber crooks."


The increase in domain name disputes handled by alternative dispute resolution institutions such as WIPO and the National Arbitration Forum ("FORUM") also support MarkMonitor's findings. In 2006, the FORUM's domain name dispute caseload increased by 21%.


The results of MarkMonitor's report indicate a real concern for businesses trying to protect their trademarks on the Internet. Specifically, these cybersquatting, phishing, tasting, and pay-per-click practices are leading to losses of revenue and advertising costs, and false association of brand names and products. As an initial defense, Internet browsers Firefox and Internet Explorer have attempted to block phishing attempts by inhibiting Internet users from accessing these sites. While the global efforts being made by Mozilla and Microsoft are laudable, businesses are ultimately encouraged to pursue individualized methods of protection, such as careful domain name monitoring, or contacting a specialist IT outsourcer for further assistance.




In The News



GoDaddy Takes Over RegisterFly Domain Names, May 30, 2007: has come to the rescue of the hundreds of thousands of domain name registrants who held their registrations with RegisterFly, which recently lost its accreditation. ICANN had been searching for a registrar to take over the registrations since April, when a court allowed ICANN to strip RegisterFly of its accreditation as a domain name registrar due to numerous complaints from customers about RegisterFly's business practices. will now manage over 850,000 domain names that were previously registered with RegisterFly. To facilitate the transfer of these domain name registrations, has set up a dedicated hotline and website for questions from former RegisterFly customers. Link to Full Story Domain Name Sells for $9.5 Million


Los Angeles Times, May 16, 2007: MXN Ltd. has paid $9.5 million for the rights to the <> domain name, rivaling the record-setting $12 million spent by Boston-based Escom for <> in 2006. Moniker, a domain name broker and manager, helped facilitate the sale of the domain name, which reportedly sold for a comparatively meager $47,000 in 1997. MXN Ltd. has not yet announced its intentions for the <> domain name, but several commentators from the domain name industry are not surprised by the domain name selling for such a high price. There has been a renewed interest in domain names containing simple, common terms in recent years because of the value of advertising on these websites, as well as the curiosity of Internet users looking to see what is posted at these domain names. Moniker also helped sell the <> domain name for $1.5 million and the <> domain name for $1.2 million in recent years. Link to Full Story



Over 10,000 Misspelled Domain Names Target Top Ten U.S. Banks


PRWeb, May 21, 2007: As the financial industry continues to struggle with online phishing schemes, Citizenhawk, a digital brand management solutions company, reports that over 10,000 domain names that potentially infringe upon the trademarks of the top ten banks in the United States are registered to third parties. Many of these domain names are misspelled variations of registered trademarks, indicating that typosquatting should be a primary concern of financial companies looking to cut down on phishing. Topping the list was CapitalOne, with approximately 2,519 cybersquatted domain names. Rounding out the top five were Wachovia (2,318), Bank of America (1,595), Wells Fargo (1,557), and Citibank (1,082). Citizenhawk suggests that these banks continually monitor domain name registrations by third parties to see if they infringe on their trademarks, for this could help prevent some of these individuals and entities from setting up fraudulent websites and phishing for customers' financial information. Link to Full Story



South Dakota Politicians Already Registering Domain Names for 2010 Election


Rapid City Journal, May 20, 2007: Even though the election for governor is still over three years away, two South Dakota politicians have already registered domain names as part of their election strategies. On advice from their children, Lieutenant Governor Dennis Daugaard and state Senate Majority Leader Dave Knudson, both Republicans, registered the <> and <> domain names, respectively. These early registrations highlight a recent trend among political candidates to register domain names containing their names before their opponents or cybersquatters can get their hands on them. However, a potential opponent for both men, Republication Matt Michels, does not see the need to register a domain name this early in the campaign, and states that he would not even be willing to pay for it later on if somebody else ends up registering his name as a domain name. Conversely, an unsuccessful Democratic candidate in the 2006 election for governor does see the need for any person with political ambitions to register domain names containing their name in combination with the offices for which they might potentially run. Link to Full Story



Master of His 300,000 Domain Names: Kevin Ham


CNN Money, May 22, 2007: While there are numerous individuals and entities in cyberspace that maintain large portfolios of domain names, a former medical doctor has amassed a collection of over 300,000 domain names worth an estimated $300 million, including <>, <>, <>, and <>. Kevin Ham earns an estimated $70 million in revenue off of these domain names, as well as his other Internet business ventures. One of Ham's most successful, although controversial, ventures has been the diversion of numerous ".cm" domain names. The ".cm" top-level domain ("TLD") is the country code for the African country of Cameroon, but it is also one letter off from ".com," and many Internet users mistakenly omit the "o" and type in ".cm" domain names instead. Ham then earns revenue from people who click on the advertising at his websites. Ham would like to also divert domain names with the ".co" (Colombia) and ".om" (Oman) TLDs, which are also typos of the generic TLD ".com." Other country code TLDs of interest are ".ne" (Niger), and ".et" (Ethiopia) - misspellings of the ".net" TLD. So far, Kevin Ham has  flown under the radar, as most experts in the domain name industry were unaware of his existence before the publication of the linked article; his name does not appear in the WHOIS information for any of his domain name registrations. While not everyone agrees with the strategies and tactics Ham has used to amass his domain name fortune, Ham manages to stay ahead of the game and continues to register between 30 to 100 names per day. A devout Christian, he is currently developing a website for <> which he hopes will be the premier Internet source of information on religion. Link to Full Story



Major Spammer Arrested By United States Federal Government


Yahoo!News, May 31, 2007: Internet users will likely see a decrease in the amount of unwanted e-mails they receive, now that a major spammer has been arrested. Robert Alan Soloway, who one lawyer labeled as one of the top ten spammers in the world, was indicted by a United States federal grand jury on 35 counts, including mail fraud, wire fraud, e-mail fraud, aggravated identity theft, and money laundering. Federal prosecutors are also seeking to have him forfeit some of the money he has made from his e-mail marketing business. Since 2003, Soloway has allegedly used "zombie" computers to send millions of e-mails to Internet users on a daily basis. Soloway has been subject to two previous civil judgments against him - a $7 million lawsuit by Microsoft in 2005 and a $10 million lawsuit by a small Internet service provider in Oklahoma. This is the first time the United States federal government has used identity theft statutes to prosecute a spammer. Soloway could face several decades in prison for his actions. Link to Full Story




Upcoming events



June 19-22, 2007

T.R.A.F.F.I.C. Domain Name Conference and Expo.

New York, New York

June 25-29, 2007

ICANN's 29th International Public Meeting.

San Juan, Puerto Rico



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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.