Complainant appears to have been misleading as to whether it adopted its mark before or after respondent’s registration of the domain name CREDITEUROPE.COM, and argues that it is simply more important than registrant. Complainant loses on the first prong and there’s a stinging concurrence.
Decision UDRP Credit Europe
Plaintiff is a re-seller of Defendant’s NUPRO product. It registered the NUPRO.COM name and used it as landing page to promote the NUPRO product (linking to its multi-brand site). Defendant brought a UDRP and for the reasons described in this decision, the panelist held that plaintiff’s use exceeded a four part test of fair use by a re-seller:
1 the respondent must actually be offering the goods or services at issue;
2 the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait internet users and then switch them to other goods;
3 the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents;
4 the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Under the ‘appeal’ procedure of the UDRP, plaintiff has now moved to stay the transfer and seeks a declaration of non-infringement in the SDNY (note that this is properly a de novo review by the district court).
Complaint Udrp Appeal
Tucker Carlson works for The Daily Caller. He is on the opposite side of the political spectrum from Keith Olbermann. The Daily Caller purchased the name KEITHOLBERMANN.COM. Yesterday it ran a story on it entitled “WE OWN YOU.” As of this writing, the lead story on KEITHOLBERMANN.COM is not about Keith Olbermann but about Mitt Romney. Carlson indicated that his new personal email was [email protected] Today they are offering KeithOlbermann.com email addresses.
Tucker Carlson is presumably familiar with the elements of cybersquatting, as in 2008 he brought a UDRP to obtain tuckercarlson.com.
Salon has now reportedly registered tuckercarlson.net.
If ICM changed nothing about its intentions in the past five years, then I agree with myself: it’s a minor harm reduction model, not targeted at the largest societal issues with porn, but probably worth the experiment.
In anticipation of next week’s meeting in Brussels, ICANN has released a fourth draft of the Applicant Guidebook that describes the process of applying for new generic top level domains.
It has also released “An Economic Framemark for the Analysis of the Expansion of Generic Top-Level Domain Names” which concludes that either good and/or bad things could result from new gTLDs.
Economic Analysis of New Gtlds 16jun10 En
.JOBS is a sponsored TLD. Wikipedia notes that:
The intended use of the domain jobs is for companies and organizations to register some version of their corporate names and use it for a site specifically aimed at those seeking employment with that company, as distinguished from general corporate and marketing sites in other top level domains such as com. For instance, asda.jobs is a site giving information about jobs available at British supermarket chain Asda. The licensed operator of the jobs domain is Employ Media LLC.
The model was questioned at the time of introduction in 2005 and adoption of .JOBS names appears to be sporadic.
No one appears to be allowed to register ACCOUNTING.JOBS for accounting jobs, nor could Craigslist, for example, register CRAIGSLIST.JOBS to advertise third party jobs.
Emply Media has now requested permission from ICANN to loosen up its registration practice for .JOBS, a move already criticized by some industry observers and others.
Most of you are familiar with ICANN’s new gTLD process. Many trademark owners are contemplating applying for top level domains reflecting their brands (“Dot Brands”).
Operating a gTLD registry will require expertise as well as an infrastructure that meets ICANN’s standards. Importantly, ICANN is evaluating its policy of registry-registrar separation. This could mean that if you apply for and receive .YOURBRAND, you may own and control the registry that manages the TLD, but you may have to use non-owned and controlled entities to be the registrar(s) that allocate the .YOURBRAND domain names, even if those names are for internal use only and no names are allocated to the public.
To assist brand-owners in meeting these and other requirements, I will be providing legal consulting services in conjunction with Com Laude and its sister company Valideus, which will be providing business and technical consulting services (brochure reproduced below). Com Laude, an accredited registrar specializing in managing domain name portfolios for large brand owners, has developed a “white label” registrar and registry solution for applicants for Dot Brands.
We will be advising on ‘Dot Brand’ applications to ICANN (as well as on brand-protection issues arising from the new gTLDs, applicable to any trademark owner).
I will be attending th INTA Annual Meeting in Boston, as will the principals of Com Laude and Valideus, Nick Wood and Lorna Gradden. If your company is exploring filing for a Dot Brand TLD, please contact me.
Valideus Leaflet NEW
The UDRP only deals with cybersquatting in the second level domain of a gTLD, so the owner of the mark HOT RUSSIAN BRIDES will fail on the first prong of a UDRP against JIMSLIST.COM, even if the registrant uses the path name JIMSLIST.COM/AGENCIES/HOTRUSSIANBRIDES (and even if the UDRP panel believes that complainant has a perfectly good trademark infringement action). And if the purpose of filing the UDRP was to merely to uncloak the true registrant by naming the proxy service as the defendant, well, that might not work either. On the other hand, registrant claims that it stopped the complained-of behavior.
Decision Udrp Hot Russian Brides
ICANN didn’t accelarate the deadlines for applying for new TLDs. There still isn’t a set deadline. There probably won’t be a deadline set prior to the next open meeting in June. Stay tuned. More here.
The Internet Committee of the International Trademark Association started its work for the year yesterday by asking us to introduce ourselves and outline what we wanted to work on. I got carried away with mine, so I’ve decided to expand my remarks into a treatise.
I have been involved in domain name disputes since 1994 (when I stupidly didn’t register google.com). I have been following domain name politics since the 1998-2001 era that saw the creation of ACPA, ICANN and the UDRP. I have represented famous mark owners policing their marks in various fora (and have also assisted some famous mark owners in becoming registrars). I was actually the GC of a registrar for about a day.
While I concur in my fellow trademark lawyers’ desire that there be a voice for the TM lobby before ICANN, it is my view that ICANN has resembled a captured regulatory agency in its first ten years, and, as the tether to DoC is weakened, it is my fear, rightly or wrongly, that ICANN will devolve into a little more than a trade association for domain interests.
The negotiating team on behalf of TM interests (INTA and IPC) are very able and I think that to the extent that that TM interests can accomplish goals working within the ICANN process, this group will achieve the best possible result (within that limited context).
Having said that, I think there are two other courses of action that the TM world should explore, if it wants to actually change the status quo of brands within the domain name system. One is litigation (which discussion can be held another day depending on how badly the new gTLD process goes).
The more interesting (and difficult) approach is a lobbying and educational effort as to the role of new TLDs in creation of a safe space for e-Commerce. I have preached on this before and my view is:
Because of (legitimate) free speech and privacy concerns (and the exploitation thereof), DNS-wide acquisition and WHOIS standards will never be adequate from a consumer protection/brand protection point of view. Therefore it seems to me that there has to be a commercial ‘confort’ zone within the DNS that does have adequate standards – for example, standards as to how domains are distributed and to the identification and verification of the people who register the domains.
The ‘High Security Zone’ paper that ICANN commissioned is a useful starting point for this conversation. It says ‘this is one view of what a safe and secure TLD looks like.’ Frustratingly, ICANN, being ICANN, neuters the concept by saying in effect: ‘well, we won’t make HSZ concepts mandatory and we won’t give anyone an incentive to adopt this.’
I should mention that when I attended a meeting at the Seoul ICANN, and the question arose as to possibly making HSZ practices standard, one ICANN official said that it would harm ICANN’s initial contact with its ‘clients’ (Client was the word used to describe new gTLD applicants) if it imposed such costs of doing business on them.
That’s one ICANN official’s mindset, for what it’s worth.
So ICANN is not going to impose ‘commercial zoning’ on the entire DNS (nor should it) and won’t itself create a secure commercial zone within it, so I think that it’s up to the legitimate business community to create one (and urge that ICANN does as much as it can in assisting this). While this task is going to require the efforts and resources of much more than the brand protection commmunity, folks like the TM lobby can advance the effort greatly by thinking about the development of the structures of a working HSZ:
What are the elements of a HSZ? How do you get brand owners to do business in the HSZ, given their prior investment in non-HSZ TLDs? How do you get customers to patronize the HSZ sites? Hard questions, but a successful HSZ would make a significant dent in counterfeits, cybersquatting, phishing and spoofing. A worthwhile goal.
That’s what I want to work on.