Your Source for Domain Dispute News and Information

December 2009, Vol. 10 No. 12

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

ConsumerInfo.com, Inc. v. Netcorp Netcorp

New Consequences for Users of Social-Networking Websites

SnapNames Exec Bid Up Domain Names

Egypt Claims First Arabic Domain Name


RECENT DECISIONS

Bin Shabib & Assocs. (BSA) LLP v. Hebei IT Shanghai ltd

Complainant, Bin Shabib & Associates, brought a UDRP claim against Respondent for the <bsa.com> domain name. Complainant argued that it had rights in the BSA mark through its application for a trademark registration with the United Arab Emirates trademark authority as well as a valid registration for the <bsa.ae> domain name. Complainant further contended that Respondent's Response failed to comply with 5(a) of the Policy in that it exceeded the 15 page limit-the signature spilled over to the 16th page of Respondent's submission. Despite the Response's deficiencies, the Panel chose to consider it. The Panel further found that reverse domain name hijacking had occurred because Complainant's application for a trademark registration with the United Arab Emirates trademark authority had not established sufficient rights in the BSA mark. Furthermore, Complainant knew or should have known that it would be unable to prove that Respondent lacked rights or legitimate interests in the disputed domain name or that Respondent registered and is using the disputed domain name in bad faith. Thus, the Panel denied Complainant's request for relief. Bin Shabib & Assocs. (BSA) LLP v. Hebei IT Shanghai ltd, FA 1287164 (Nat. Arb. Forum Nov. 19, 2009).

AT&T Intellectual Prop. II, L.P. v. webmasters411.com

Complainant, AT&T Intellectual Property II, L.P., brought a UDRP claim against Respondent, webmasters411.com, for the <att411.com> domain name. Respondent asserted that the <att411.com> domain name was an abbreviation for <AroundTheTrack411.com>, which Respondent also owned. Respondent contended that these domain names were intended to be used in the future, after Respondent retires, for race track information, and that for now, these domain names are being parked to ensure future access. The Panel noted that the focus in an ICANN proceeding is not on "whether the distinctiveness of the famous mark has been blurred," but is instead on "whether the evidence establishes an abusive domain name registration." The Panel concluded that trademark law does not require disputed domain names which incorporate another's mark to be transferred to the trademark owner, but that such transfer may be ordered in certain circumstances. The Panel found that Respondent's future plans for the disputed domain name and the parking of the disputed domain name did not establish legitimate rights in the <att411.com> domain name, nor did they defeat a claim of bad faith under the Policy, and thus, the Panel ordered the transfer of the <att411.com> domain name to Complainant. AT&T Intellectual Prop. II, L.P. v. webmasters411.com, FA 1286049 (Nat. Arb. Forum Nov. 23, 2009).

Radio Syndicate, Inc. v. oszie.com

Complainant, Radio Syndicate, Inc., brought a UDRP claim against Respondent for the <pocosperolocos.com> domain name. The phrase translates from Spanish to English into "we are few but crazy." Complainant submitted that it is a widely-recognized radio show broadcasted in thirty-eight markets throughout the United States. Respondent contended that Complainant did not submit evidence of a trademark registration for the phrase and also asserted that the phrase is a common, generic phrase in the Spanish language. The Panel found that Complainant has submitted insufficient evidence to prove rights in the mark. The Panel also expressed concerns that Complainant's date of first use and Respondent's registration of the disputed domain name was only a month apart; the Panel concluded that even if Complainant would have established sufficient rights in the mark, it is questionable whether they would have found for Complainant because of the short time span between the two events. Thus, the Panel denied Complainant's request for relief; Respondent retained the disputed domain name. Radio Syndicate, Inc. v. oszie.com, FA 1287149 (Nat. Arb. Forum Nov. 25, 2009).

ConsumerInfo.com, Inc. v. Netcorp Netcorp

Complainant, ConsumerInfo.com, Inc., brought a UDRP claim against Respondent for 1,017 disputed domain names. Complainant argued that it had established common law rights in its FREECREDITREPORT.COM mark. Respondent claimed that it did not matter that Complainant had established rights in the mark, because Respondent's registration of the 1,017 disputed domain names predated Complainant's registered rights in its mark. The Panel found that the UDRP does not require Complainant's registered rights to predate Respondent's registration of the disputed domain names to satisfy Policy 4(a)(i). In addition, the Panel found that Complainant established common law rights in the FREECREDITREPORT.COM mark that predated all of Respondent's disputed domain name registrations. The Panel further held that Respondent's registration of the 1,017 disputed domain names is evidence of a pattern of bad faith registration and use under Policy 4(b)(ii). The Panel transferred the disputed domain name to Complainant. ConsumerInfo.com, Inc. v. Netcorp Netcorp, FA 1283469 (Nat. Arb. Forum Nov. 11, 2009).

Richard Gary Enterprises v. Sesto

Complainant, Richard Gary Enterprises d/b/a The Gary Group, brought a UDRP claim against Respondent for the <thegarygroup.com> domain name. Complainant alleged that Respondent was a former employee of Complainant for eight years. Complainant contended that Respondent's registration of the disputed domain name, and its operation of the resolving website, was done with the intent to compete with Complainant after Complainant dismissed Respondent. Respondent argued that Complainant had not provided sufficient evidence that the resolving website competed with Complainant. The Panel found that Complainant established sufficient proof that Respondent intentionally registered and used the disputed domain name in order to disrupt Complainant's business because of Respondent's animosity towards his former employer. The Panel transferred the disputed domain name to Complainant. Richard Gary Ents. v. Sesto, FA 1284386 (Nat. Arb. Forum Nov. 11, 2009).


E-PRACTICE

Users of Social-Networking Websites May Now Face Unpleasant Consequences

Social-networking websites such as Facebook, Twitter, LinkedIn, and MySpace have grown immensely in recent years. They have become so popular that employers are increasingly checking these social-networking websites to screen job applicants further. While inappropriate postings on these sites can cost you your job, it seems now that both using and not using social networks may have other serious consequences.

In Canada, a woman who was on extended sick leave suddenly lost her insurance benefits when her insurance agent found her Facebook page. Nathalie Blanchard, was diagnosed with major depression this fall and was receiving monthly benefits when suddenly payments stopped. When Ms. Blanchard contacted her insurance provider, her insurance agent described several pictures posted on her Facebook that showed her out having fun with friends and vacationing. The insurance agent then told Ms. Blanchard that these pictures were evidence that she is no longer depressed and thus, no longer in need of insurance benefits for depression. Ms. Blanchard contends that she was advised by her psychiatrist to take vacations. Her insurance provider asserts that it would not terminate benefits based on website postings alone. She has retained an attorney and is pursuing legal action against her former insurance provider.

While Ms. Blanchard's story may be an object lesson in using social media, the next story may be a lesson on the dangers of not using social media. A record executive was arrested at a mall in Garden City, New York after he refused to use his Twitter account. Canadian teen singer Justin Bieber had showed up to the mall for an album signing. Later, a large crowd of mostly teenage girls had gathered at Roosevelt Fields mall to partake in the signing. Thousands of autograph-seekers showed up and became unruly. Police working the event became concerned that the crowd could become violent so they asked James Roppo, a senior vice president at Island Def Jam Records, to use his Twitter account to plead calm among the crowd. When he refused, Mr. Roppo was arrested. According to police, Mr. Roppo's noncompliance could amount to charges of criminal nuisance, endangering the welfare of a minor, and obstructing governmental administration. A spokesman for the police claimed that Mr. Roppo's refusal to cooperate with officials put lives in danger and was a risk to public safety. In an odd twist, Justin Bieber himself posted a tweet warning of the situation.

As with the computer over the past three decades, as the popularity of a technology increases, humans become more and more dependent on that technology. Whether social networking has already reached this point remains to be seen, but these two stories seem to indicate that human society is inching toward just that sort of dependence.


IN THE NEWS

Runescape Creator Pursues "Phishing Thieves"

BBC News, November 30, 2009: A British man has been arrested for stealing virtual gold and rare items from gamers' accounts. The creators of Runescape, which has over 100 million active players, say it is the first of several real-world arrests for in-game fraud. Perpetrators use phishing e-mails to trick players into revealing their gaming password, and then steal their online identity, gold, and other items. Stolen online goods have a real world value, and the thieves launder the online goods to gain real world money. Link to full story

Former Executive of SnapNames Improperly Bid Up Domain Prices

Washington Post, November 4, 2009: SnapNames, the largest reseller of domain names, announced that between 2005 and 2007 a top level executive bid on domain names to drive up the price. The executive's activities were against company policy, and the employee was subsequently fired. The company said that as many as 50,000 domain name auctions were affected, about 5 percent of the auctions since 2005. SnapNames is taking actions to reimburse affected buyers. Link to full story

Egypt Lays Claim to First Arabic Domain Name

Wall Street Journal, November 16, 2009: On the first day that the Internet Corporation for Assigned Names and Number (ICANN) opened registration for non-Latin script domains, Egypt claimed to have been the first to register an all-Arabic domain name. ICANN chief executive, Rod Beckstrom, said that six countries have submitted applications for domains in three languages. Currently, the registration of non-Latin script domains is only open to government-controlled domains, which accounts for about 40% of all websites. Link to full story

Hackers Spread Virus with Swine Flue Vaccine Offer

Reuters, December 1, 2009: Hackers are spreading a computer virus via an e-mail urging recipients to visit a bogus website offering vaccinations against the swine flu. The e-mail looks like it is from the U.S. Centers for Disease Control and directs users to a website that looks like an official government website. However, the website actually downloads malicious software onto the Internet user's computer. The virus allows the hackers to take control of the computer. Hackers typically launch attacks based on current, popular news stories. Link to full story


UPCOMING EVENTS

January 27-30, 2010

AIPLA Mid-Winter Institute
La Quinta, California

January 29-30, 2010

ABA Business Law Section, Cyberspace Committee Winter Working Meeting
Coral Gables, Florida

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

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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.