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Your Source for Domain Dispute
News and Information |
June 8, 2007,
Vol. 8 No. 06 |
Welcome to Domain News, a complimentary
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In
This Issue
Courtney Love v. Brook Barnett
Report Shows Cybersquatting is Increasing Substantially
GoDaddy Takes Over RegisterFly Domain Names
Porn.com 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 <aimprofiles.com>
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 <aimprofiles.com>
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 <aimprofiles.com>
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 <kittyradio.com> and
<kurtcobain.com> 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 <blackstonewine.com>
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 <blackstonewine.com>
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 <occidentalhotels.net> 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 <worldgyms.com>
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 <worldgyms.com>
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 <worldgyms.com> 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
<187.com> domain name. As Complainant provided no evidence of the
official trademark registration upon which it relied, the Panel refused to
find the <187.com> 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).
E-PRACTICE
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
Geek.com, May 30, 2007: GoDaddy.com 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. GoDaddy.com will now
manage over 850,000 domain names that were previously registered with
RegisterFly. To facilitate the transfer of these domain name registrations,
GoDaddy.com has set up a dedicated hotline and website for questions from
former RegisterFly customers.
Link to Full Story
Porn.com 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 <porn.com> domain name, rivaling the
record-setting $12 million spent by Boston-based Escom for <sex.com> 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 <porn.com> 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 <cameras.com>
domain name for $1.5 million and the <scores.com> 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 <daugaardforgovernor.com> and <knudsonforgovernor.com> 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 <god.com>, <satan.com>,
<christianrock.com>, and <weddingcatering.com>. 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 <religion.com> 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
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