Your Source for Domain Dispute News and Information February 14, 2008, Vol. 9 No. 02

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In This Issue



Lockheed Martin Corporation v. Extraordinary Things LLC


Blackheart Records Group, Inc. v. Sacred Dogs Entertainment


Domain Name Front Running at the Forefront


MySpace Wins Domain Name Fight




Recent Decisions



Target Brands, Inc. v. RareNames, WebReg


Complainant, Target Brands, Inc., brought a UDRP claim against Respondent for ownership of the <> and <> domain names. Respondent contended that both domain names were comprised of common terms and that its business policy was to only maintain domain names that incorporate common words or phrases in which no single party has exclusive rights. The three-member Panel concluded that, although the disputed domain names were confusingly similar to Complainant's TARGET mark, the terms were not exclusively associated with Complainant. Thus, the Panel concluded that Respondent had rights and legitimate interests in the disputed domain and denied Complainant's request for the <> and <> domain names. Target Brands, Inc. v. RareNames, WebReg, FA 1109401 (Nat. Arb. Forum Jan. 22, 2008).



Lockheed Martin Corporation v. Extraordinary Things LLC


Complainant, Lockheed Martin Corporation, challenged Respondent's use of the <>, <>, and <> domain names in a UDRP claim. Respondent alleged that Complainant's failure to register the LOCKHEED marks specifically for financial and venture capital services with the USPTO allowed Respondent to use the term for those purposes. Complainant asserted that it had established common law rights for those purposes, and that under Policy 4(a)(i), the mark does not need to be registered for a specific purpose to establish rights. The Panel found Respondent's argument unpersuasive, and thus ordered the transfer of the disputed domain names based on Respondent's lack of rights and legitimate interests, failure to use the disputed domain names for a legitimate purpose, and offer to sell the disputed domain names to Complainant. Lockheed Martin Corp. v. Extraordinary Things LLC, FA 1117826 (Nat. Arb. Forum Jan. 23, 2008)., Inc. v. Dynamic Ventures


Complainant brought a UDRP claim against Respondent for use of the <> domain name. Respondent asserted that there was no likelihood of confusion between Complainant's AMAZON mark and the disputed domain name because Respondent's website had a different color scheme, font, and layout from Complainant's own website. The Panel rejected this argument and concluded that Respondent was using the goodwill associated with the AMAZON mark for its own benefit and because Respondent was offering software development services beyond those provided in connection with Complainant's business. Accordingly, the Panel ordered the transfer of the <> domain name from Respondent to Complainant., Inc. v. Dynamic Ventures, FA 1112201 (Nat. Arb. Forum Jan. 25, 2008).



Blackheart Records Group, Inc. v. Sacred Dogs Entertainment


Complainant brought a UDRP claim against Respondent for the <> domain name. Respondent is a former member of the now-defunct musical group "The Runaways" and registered the disputed domain name to promote a documentary film about the group. The Panel found Respondent had rights and legitimate interests in the <> domain name because it registered the domain name before Complainant's THE RUNAWAYS federal trademark was issued, and the marketing of the documentary film appeared to be a bona fide offering of goods or services. For the same reasons, the Panel found that Respondent did not register and use the disputed domain name in bad faith. Therefore, the Panel declined to transfer the <> domain name to Complainant. Blackheart Records Group, Inc. v. Sacred Dogs Entmt. , FA 1115098 (Nat. Arb. Forum Jan. 11, 2008).



AOL LLC v. Gillenkirk


Complainant brought a UDRP claim against Respondent for multiple domain names incorporating Complainant's registered SHOUTCAST mark. Complainant uses the SHOUTCAST mark to market audio streaming computer software. Respondent was using the disputed domain names to market competing audio services and had offered to sell them to Complainant. The Panel first found that the disputed domain names were confusingly similar to Complainant's SHOUTCAST mark. In addition, the Panel found that Respondent did not have rights or legitimate interests because Respondent was not commonly known by the disputed domain names and only utilized them to market services that directly compete with Complainant. Along with this, the Panel found that Respondent's unsolicited offer to sell the disputed domain names indicated Respondent's bad faith registration and use pursuant to Policy 4(a)(iii). Therefore, the Panel transferred the disputed domain names from Respondent to Complainant. AOL LLC v. Gillenkirk, FA 1110120 (Nat. Arb. Forum Jan. 14, 2008).



Johnstone Smith v. Leopard Spot


Complainant brought a UDRP claim against Respondent for the <> and <> domain names. Complainant originally hired Respondent to register and secure the disputed domain names in Complainant's name. Instead, Respondent registered them in its own name and refused to transfer them, arguing that the issue was outside of the scope of the UDRP because it involved a contractual dispute. The Panel found that the case was within the scope of the UDRP because Respondent was never authorized to register the disputed domain names in a name other than Complainant's. The Panel then found that Complainant had established the requisite Policy requirements. Therefore, the Panel transferred the <> and <> domain names from Respondent to Complainant. Johnstone Smith v. Leopard Spot, FA 1114747 (Nat. Arb. Forum Jan. 15, 2008).







Domain Name Front Running at the Forefront


Domain name front running has been a very hot topic over the last few months. The November 2007 volume of Domain News first reported on ICANN's investigation of front running, whereby domain name search queries are tracked and the most sought-after domain names are opportunistically registered by others before the searching individual has a chance to do so. In effect, the front runners block searching individuals from registering their preferred domain names and then attempt to induce these searching individuals to pay an amount greater than the costs of registering in exchange for transferring the domain names. The ICANN Security and Stability Advisory Committee (SSAC) considers this procedure threatening to the open availability and marketability of domain names and in October issued an advisory warning alerting Internet users of this practice.


To address this concern, Network Solutions, one of the leading domain name registrars, added a customer protection measure in which it reserves domain names searched for on its website for a period of four days to prevent others from opportunistically registering these domain names. However, ICANN and others in the industry characterize the protection measure itself as front running, and claim that Network Solutions is attempting to monopolize the market by forcing customers to purchase these reserved domain names exclusively through Network Solutions at prices set higher than market value. Jonathon Nevett, Vice President of Policy at Network Solutions, responded by stating that this measure was intended to curb domain tasters, who register domain names during a five-day grace period based upon their expected popularity and thus constitute the largest segment of front runners. Nevett also indicated that the measure is meant to give Internet users assurances that they will be able to register their preferred domain names after searching for their availability.


Some industry analysts considered Network Solutions' practice to be fraudulent, and may even constitute theft. In addition, according to ICANN executives, Network Solutions initially admitted that its procedures were not in compliance with the Registrar Accreditation Agreement (RAA). However, Network Solutions has since amended its measure to ensure legality and compliance.


Nevertheless, at a January 23, 2008 meeting, ICANN's Board of Directors passed resolutions aimed at preventing domain name front running by Network Solutions or any other entity, as well as preventing domain tasting in general. (See Items 5 and 6 in ICANN's meeting minutes.) Specifically, ICANN is considering eliminating the five-day grace period (commonly referred to as the "Add Grace Period," or AGP) by imposing its standard annual fees for registering a domain name for any period of time. If this proposal is passed, Network Solutions will cease implementing its customer protection measure, according to Susan Wade, a spokeswoman for the company.


ICANN will continue to discuss, and potentially vote, on whether to implement this change to the RAA at upcoming meetings. In the mean time, registrars will continue to try and find ways to curtail domain name front running, tasting, and other improper procedures.




In The News



ICANN Pleads for Freedom from Government Control, January 28, 2008: According to a report prepared by the Internet Corporation for Assigned Names and Numbers ("ICANN"), the United States government has been asked by ICANN to free the organization from the government's control. The report was sent the Department of Commerce and outlined how ICANN had met the objectives placed down by the U.S. government, which ICANN had to meet in order to become independent. One of these objectives, which ICANN claims to have achieved, was to "put in place a means of being accountable to parties with an interest in the internet, including other governments." However, contradicting the report, Dr. Milton Mueller stated: "Compared with other international organizations ICANN is very transparent, but at times it still feels a bit more like a private club, with not enough checks and balances." Link to Full Story



Charging $ .20 to Stop Domain Tasters, January 30, 2008: ICANN is considering keeping the annual $ .20 fee it charges for a domain name, whether or not the registering party decides to keep the domain name after the 5-day trial period. The move is intended to stop "domain tasters" from purchasing a large number of domain names in order to see which ones incur the most amount of traffic. While the grace period was originally intended to give people a refund if they misspell their domain name, the problem of "domain tasting" has begun to reach dangerous levels. In an ICANN report, during January 2005, 1.7 million domain names were registered and 41% were deleted during the grace period. In January of 2007, 51 million domain names were registered and 94% were deleted. The fee proposal will be contained within ICANN's 2009 fiscal budget which will be discussed in Paris in June. In order to pass, the proposal must be approved by registrars that comprise two-thirds of the revenues received by ICANN. Link to Full Story


MySpace Wins Domain Name Fight, January 31, 2008: British domain registry Nominet's dispute resolution service recently made a controversial decision. Independent arbitrator Antony Gold ruled that ownership of the <> domain name be transferred to MySpace, the popular social networking site. Many found the decision surprising, as the domain name was originally registered in 1997, six years before MySpace launched, by Total Web Solutions of Stockport. While the <> domain name was originally registered to offer e-mail services and mini-websites, Gold found that the site was now being used to display ads in competition with MySpace and thus exploited the popularity of MySpace. Total Web Solutions argued that it did not control the specific ads displayed on its website, as they were determined by algorithms based on search terms. However, Gold found this to be irrelevant, as a domain name owner is ultimately responsible for the content of his or her website. According to Jonathon Robinson, COO at the web services company NetNames: "It is amazing how, after so many years, domain disputes still cause such unpredictable outcomes and associated controversy. . . It also highlights how automated web content of any sort can get people into real difficulties." Link to Full Story


GoDaddy gives back after a successful year January 2, 2008: Web-hosting domain registrar GoDaddy had a very successful year, and it is sharing the wealth. The company, located in Scottsdale, Arizona, gave $1.4 million to a variety of causes and charities including juvenile diabetes, unwed mothers, blind children, and animal shelters. GoDaddy has been very generous in the past as well. Through its CEO and Founder Bob Parsons, GoDaddy made a $200,000 donation to the Juvenile Diabetes Research Foundation International last September. GoDaddy also rewarded its employees for the successful year. Over $1 million was spent on employees in the form of prizes and contest winnings. Mr. Parsons stated, ''We learned a long time ago, happy employees are productive employees. We hold fun contests all throughout the whole year.'' The successful year was concluded with an amazing company party featuring musical entertainment by the Gin Blossoms and gifts for all the employees. Link to Full Story



New Blockbuster Highlights Cybercrime



Upcoming events



February 18-21, 2008 T.R.A.F.F.I.C. West
April 18-20, 2008

Domain Roundtable

San Francisco, CA



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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.