Your Source for Domain Dispute News and Information

May 2009, Vol. 10 No. 05

Welcome to Domain News, a complimentary news service of the National Arbitration Forum. The National Arbitration Forum is one of the world's largest neutral administrators of arbitration services and one of four ICANN-approved providers. We invite you to visit our website at www.adrforum.com.

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IN THIS ISSUE

Edible Brands, Inc. v. Schinzinger 

ISP Cooperation the Focus of Copyright Infringement Crackdown 

Spammers Exploit Swine Flu Fears in Phishing Scams 

The National Arbitration Forum heads to INTA—come meet us there!


RECENT DECISIONS

Traditional Medicinals Inc. v. Worldwide Media Inc.

Complainant, Traditional Medicinals Inc., brought a UDRP claim against Respondent for the <smoothmove.com> domain name. Complainant alleged that Respondent had no rights or legitimate interest in the domain name, which was identical to Complainant’s SMOOTH MOVE trademark. Complainant also alleged that the disputed domain name had been registered, and was being used, in bad faith. Respondent alleged that the domain name was merely a descriptive term composed of two common dictionary words, and that they did not intend to use Complainant’s mark. The Panel was concerned with Respondent’s lack of care about registering trademarked names. The Panel found that this lack of care suggested that there was no bona fide offering or legitimate noncommercial use. Therefore, the panel transferred the disputed domain name to Complainant. Traditional Medicinals Inc. v. Worldwide Media Inc. , FA 1247728 (Nat. Arb. Forum April 7, 2009).

Edible Brands, Inc. v. Schinzinger

Complainant, Edible Brands, Inc. brought a UDRP claim against Respondent, Stefan Schinzinger, for the <ediblebrands.com> domain name. Complainant alleged that the disputed domain name was confusingly similar to the family of EDIBLE marks, and that the domain name was being used in bad faith. Respondent countered that Complainant does not have rights in the mark because they were only a “holding company” for the owners of the EDIBLE marks, and that Complainant’s pending trademark registration conferred no enforceable rights in the mark. The Panel agreed with Respondent on that issue. It also found that the domain name differed from Complainant’s EDIBLE ARRANGEMENTS mark in several ways and so was not confusingly similar to the disputed domain name. The Panel also found that Complainant’s argument under Policy ¶ 4(a)(iii) failed to meet the burden of proof of bad faith because it was based on mere assertions, consequently, the Panel concluded that relief should be denied. Edible Brands, Inc. v. Schinzinger, FA 1246518 (Nat. Arb. Forum April 2, 2009).

3M Company v. Nazario d/b/a Penbras International

Complainant, 3M Company, brought a UDRP claim against Respondent for the <3mpromotional.com> domain name. Respondent was using the disputed domain name to reproduce Complainant’s website resolving from the <3m.com/promotion> domain name in a frame with Respondent’s contact information. Respondent contended that it either had a right to the domain name by virtue of working with a marketing company 3M used, or by claiming to sell 3M’s products. The Panel found that this use did not confer rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel further found evidence of bad faith registration and use under Policy ¶ 4(a)(iii) in Respondent’s attempt to sell the domain name to Complainant for more than $8,000.00 and because the Panel found that Respondent was attempting to pass itself off as being Complainant, or affiliated with Complainant. Therefore, the Panel transferred the disputed domain name to Complainant. 3M Co. v. Nazario, FA 1247573 (Nat. Arb. Forum April 2, 2009).

Santa Monica Convention & Visitors Bureau v. WeAre LLC

Complainant, Santa Monica Convention & Visitors Bureau, brought a UDRP claim against Respondent for the <iamsantamonica.com> and <iamsantamonica.net> domain names. Complainant contended that Respondent had no rights or legitimate interests in the domain names, and argued that Respondent registered the domain name solely to offer it for sale, which constituted bad faith. Respondent argued that they offered a legitimate service of creating unique domain names by combining “I AM” with a geographically descriptive term, and they did not register the domain name solely to sell it. The Panel found that Complainant failed to meet its burden of proof of bad faith registration because of the geographical term does not clearly pertain to Complainant. Therefore, the Panel found that relief should be denied. Santa Monica Convention & Visitors Bureau v. WeAre LLC, FA 1247925 (Nat. Arb. Forum April 14, 2009).

Word of Faith International Christian Center v. Hight c/o Mdnh Inc

Complainant, Word of Faith International Christian Center, brought a UDRP claim against Respondent for the <wordoffaith.org> domain name. Complainant asserted common law rights in the WORD OF FAITH mark prior to Respondent’s registration of the disputed domain name, but provided scant evidence to support that assertion. Respondent submitted evidence of a third party’s incontestable registration of the WORD OF FAITH mark with the United States Patent and Trademark Office (“USPTO”) in 1980. Based on the evidence, or lack therof, submitted by the parties, the Panel found that Complainant had not established rights in the WORD OF FAITH mark under Policy ¶ 4(a)(i). Therefore, the Panel declined to transfer the disputed domain name. Word of Faith Int’l Christian Ctr. v. Hight, FA 1251581 (Nat. Arb. Forum May 1, 2009).


E-PRACTICE

ISP Cooperation the Focus of U.S. and E.U. Lawmakers in Cracking Down on Copyright Infringement

Internet Service Providers (“ISPs”) are the subject of debate in recent proposals made by both the United States and the European Union in efforts to further protect Intellectual Property (“IP”) rights. In the U.S., the Office of the U.S. Trade Representative recently released a six-page summary of the proposed Anti-Counterfeiting Trade Agreement (“ACTA”). Meanwhile, a battle is brewing between the EU member states and the European Parliament over copyright infringement.

The ACTA is a treaty that attempts to establish international standards for protecting and enforcing IP rights. Currently, the countries negotiating ACTA are: the U.S., Canada, Mexico, the 27 EU member states, Australia, Japan, Morocco, New Zealand, Singapore, South Korea, and Switzerland. The recently-released summary of the Agreement contains several proposed chapters and lists important issues that each particular chapter would address. While most of the chapters address the counterfeiting of traditional goods and services along with the enforcement at traditional borders, one section addresses the enforcement of IP rights in the digital environment. That section attempts to address the challenges that new technologies bring to intellectual property owners, and one specific issue has caused considerable discussion and debate.

According to Chapter 2, Section 4 of the summary, the agreement will address “the possible role and responsibilities of [I]nternet service providers in deterring copyright and related rights piracy over the Internet.” If this more active role of ISPs is approved, it would greatly assist various industries in their goal of protecting their IP rights. For example, the Recording Industry Association of America (“RIAA”) would gain ground in its new strategy to fight file-sharing. Instead of suing file-sharers directly, the RIAA announced in December 2008 that it would seek cooperation from ISPs to potentially shut down Internet access to suspected file-sharers. If passed, ACTA could very well make this strategy feasible.

A similar proposal has the EU member states in a dispute with the EU parliament over how to address illegal downloads. In the latest attempt to reform telecommunications in Europe, both the EU parliament and the member states agree that ISPs should be able to shutdown a user’s Internet access if there is approval from a “competent legal authority.” But the actual dispute turns on the location of the actual words. EU member state ambassadors approved the provision to be located in the proposal’s “recital,” or guidelines, which precedes the body of the proposed telecommunications law. However, some members of the parliament want to insert the language into the law itself, which, as they argue, would send a tougher message to infringers. Some legal experts say that the European Court of Justice, the EU’s highest court, has ruled that it does not matter where this disputed provision is placed. As the debate heats up, this dispute over semantics could have the potential to derail the entire European telecommunications reform.


IN THE NEWS

Spam Dominates Email Accounts

BBC.co.uk, April 8, 2009: Microsoft has released a security report showing that over 97% of all emails are unwanted. These unwanted emails are dominated by advertisements for drugs and other products, and often carry harmful attachments. The head of security and privacy for Microsoft, Cliff Evans, stated that there was no need to worry, “The good news is that the majority of that never hits your inbox although some will get through.” The report also studied how many machines were infected by some type of harmful software, and set the global average for infected machines at 8.6 for every 1,000 uninfected PCs. Link to Full Story

Internet Crime Up 33% in 2008

Siliconvalley.com, March 30, 2009: The Internet Crime Complaint Center (“ICCC”) released statistics indicating that reported Internet crime cases rose by 33% in 2008. The ICCC, a nonprofit group that tracks white collar crime, is a partnership between the FBI, the National White Collar Crime Center , and the Bureau of Justice Assistance. In the ICCC’s annual report, around 275,000 complaints were filed last year, which is up from about 207,000 the year before. The ICCC also reported that the estimated dollar loss from such scams was at $265 million, or about $25 million more than 2007. In addition, the annual report showed that men were more likely to be struck by Internet crimes, likely due to the type of shopping that men do online compared to women. Link to Full Story

Spammers exploit “swine” flu fears in phishing scams

Cnet News, April 28, 2009: Spammers are using e-mails purportedly about the “swine” flu outbreak to phish for personal information. E-mails typically either have a subject line such as “Suspected Mexican flu toll hits 81,” offer to sell Internet users bogus medication, or drop spyware on the user’s computer. E-mail recipients are asked to respond with information about anyone they know infected with “swine” flu, and spammers then use the responses to gather confidential personal information. Security experts estimate that approximately 4% of all spam currently circulated uses the “swine” flu to catch recipient’s attention. Link to full story


CALENDAR OF EVENTS

 

May 13-15, 2009

AIPLA Spring Meeting
San Diego , California

May 16-20, 2009

INTA Annual Meeting
Seattle, Washington

Meet the National Arbitration Forum’s Internet Legal Counsel at INTA this year! Kristine Dorrain manages the domain name dispute department and is available for meetings to answer questions or just say “hello.” Email her to determine availability by replying to this issue of Domain Name News.

May 22, 2009

ADNDRC Conference
Hong Kong

June 14-17 , 2009

Domain Roundtable
Washington, DC

June 21-26 , 2009

ICANN - 35th International Public Meeting
Sydney, Australia

 

Let the National Arbitration Forum know of your upcoming events for listing in Domain News. Send event listing information to: domain-news@adrforum.com. Please type "DOMAIN NEWS EVENTS" in the subject header.


DOMAIN NAME DISPUTE INFORMATION

To file a domain name dispute resolution claim, see http://domains.adrforum.com. Questions regarding domain name dispute resolution or e-commerce arbitration may be directed to domaindispute@adrforum.com.

 

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.