The Trademark Blog

With the World Series a close second, my interview on CNN International regarding domain names was certainly the most compelling television last night.

Posted by Marty Schwimmer at 01:37 PM | Permalink | Comments ()

The ICANN Board passed a bunch of resolutions Friday morning in Seoul. Internalized domain names will be fast-tracked, new generic top level domains will be slow tracked. Applications for new gTLDs will only be accepted after (and depending upon) (1) more economic analysis as to whether new gTLDs are a good thing or not; (2) more analysis as to the cumulative effect of new IDNs and other implementations on the scalability of the DNS; (3) more consideration of trademark protection; and (4) the appointment of the evaluators of the gTLD application process. So expect a fourth version of the draft Applicant Guidebook. I'm predicting fall of 2010 now as the opening date for filing applications.

Posted by Marty Schwimmer at 09:55 AM | Permalink | Comments ()

Source: ICANN contract compliance team (which enforces the accrediation contact between a registrar and ICANN):

For January to October 2009:

9 terminations of registrars
7 (contested) non-renewals of registrars
184 breach notices transmitted
4,290 enforcement actions
9,304 consumer complaints processed

Posted by Marty Schwimmer at 01:43 AM | Permalink | Comments ()

I'm here in Seoul at the ICANN meeting. The third version of the Draft Applicant Guidebook to the new TLDs is out.

As to timing, the initial word is that the process will be kicked even further into the future. ICANN suggested in the opening remarks that the application process itself, intially scheduled for early 2010, may not even start until 2011. There are TLD start-ups out there carrying heavy salary loads and they were not happy to hear this. Of course if the delay is only until September 2010, that may seem like a relief.

Also, there is the issue as to 'dot brands,' TLDs consisting of a brand owned by that brand, such as .NIKE or .AMAZON (I'm using those as examples of famous brands, not because I have any reason to believe that those particular companies want those particular TLDs). It has been an assumption that TLD applications would be judged on various technical criteria but the judging would be 'content-neutral' (within reason).

Well, the word on the street is that two ICANN board members stated publicly on Sunday that they are opposed to dot brands and will work to reject such applications.

It's not clear to what extent they can bring that about - but ICANN may wish to clarify this issue before the Fortune 100 each pay $185k in fees to ICANN for dot brands.

Of one thing I am certain - I am glad I did not devote psychic energy to this process two years ago.

The Seoul meeting can be tracked and followed remotely here.

Posted by Marty Schwimmer at 05:46 PM | Permalink | Comments ()

If you're going and want to meet up, drop a line. If you want to chat about the new gTLD process when I get back, that's good too.

Posted by Marty Schwimmer at 09:17 AM | Permalink | Comments ()

Chirs Bosh won a cyber-squatting suit and was awarded defendant's portfolio of domain names. Bosh is now giving the names away to their rightful owners. Check for your name on the list lined to in the article.

Posted by Marty Schwimmer at 02:31 PM | Permalink | Comments ()

The comedian Gil Gottfried had a routine at a 'roast' honoring Bob Sagett where a recurring theme was the denial, with greater and greater specificity, that contrary to a rumor, Bob Sagett did not in fact rape and murder a young girl in 1990. It's one of those bits that isn't funny the first six or so times the line is repeated.

So someone registers the domain name GLENNBECKRAPEDANDMURDEREDAYOUNGGIRLIN1990.COM. Glenn Beck then filed a UDRP. Registrant's response (linked to here) explains why the domain name is funny, and why Beck's interviewing technique is not.

Posted by Marty Schwimmer at 03:41 PM | Permalink | Comments ()

One of those in rem ACPA complaints you hear about.

Complaint in Rem Acpa

Posted by Marty Schwimmer at 03:50 PM | Permalink | Comments ()

InsideFacebook.com: "Will Facebook Give Away Vanity URLs in a Landrush?":

Under such a system, users would be able to get URLs like facebook.com/mark for their own personal profiles. (However, some of the most common first names are already taken.)

Administering such a landrush would be a significant challenge. Presumably, Facebook wouldn’t let users register trademarked terms or generic words like “lasvegashotels” that could be used to simply generate spammy SEO traffic. Facebook would have to establish clear rules for how the vanity URLs would be distributed.

Posted by Marty Schwimmer at 09:50 PM | Permalink | Comments ()

Mattel v Barbie-Club.com, denying in rem jurisdiction in ACPA case where plaintiff argued that mere deposit of a 'registration certificate' gives rise to in rem jurisdiction.

Also - BNA Tech Law round-up of some of the Judge's 'cyber' cases.

Posted by Marty Schwimmer at 03:31 PM | Permalink | Comments ()

ICANN continues to move forward in the implementation of the new gTLD Program while balancing and addressing community concerns on specific aspects of the program. The public comment period on the second version of the applicant guidebook recently closed and work continues to proceed regarding the discussion of overarching issues.

In order to continue progress and the community discussion, ICANN will:

Publish an analysis of comments similar to that published after the fist version of the Guidebook,
Conduct consultations and fora at the Sydney meeting and afterward to develop solutions to the overarching issues,
Publish the third version of the Guidebook after the Sydney meeting when solutions to the overarching issues can be included.
With that in mind, it is anticipated that applications for new top-level domains will be accepted starting in the first quarter of 2010.

Guidebook Analysis

As with the first version of the Guidebook, ICANN will organize and report a synopsis of all the comment made in the ICANN comment forum as well as at the ICANN meeting in Mexico City. The report will analyse comment by category and balance different proposals made. The goals of the report are to:

analyse the comment in order to develop amendments to the Guidebook that are consonant with the meaningful input of the community, and
demonstrate that the comment is taken seriously and carefully considered.
ICANN will not be producing a third version of the Applicant Guidebook for new generic top-level domains before its upcoming June meeting in Sydney, Australia. This is because the discussion of overarching issues will continue through the meeting and beyond (as was expected). Publication of a new Guidebook version without addressing these issues might signal that they are not considered important.

In order to provide specifics and point up discussion, the Comment Analysis will be accompanied by several excerpted redlined sections of the Guidebook so that potential changes can be discussed. These excerpted sections are being developed in response to the recently closed public comment forum and will be published in time for discussion in the Sydney meeting.

Overarching Issues

ICANN previously identified four overarching issues with respect to the new gTLD program. Significant progress has been made on each and the Sydney meeting will be used to focus on that work in the hope of finding solutions.

For example, a session dedicated to trademark issues will take place on Wednesday, 24 June at the Sydney meeting. There will also be an update session on the opening day of the meeting, as well as the usual updates and public forums.

Starting with the first session in Sydney, regional events will be held in Europe, the Americas and Asia, to develop Guidebook solutions to Trademark issues. Those sessions will discuss solutions offered by the Implementation Recommendation Team and other sources.

Timing

The comment analysis and redlined Guidebook sections will be published in time for discussion at the Sydney meeting. The third version of the Guidebook is scheduled to be published in early September; the comment period for that version will close after the ICANN meeting in Seoul (25-30 October 2009). This timing enables the publication of the final Guidebook and following a communications period, the acceptance of applications in the first quarter of 2010.

New gTLDs and the Internet

Openness Change Innovation

After years of discussion and thought, generic Top-Level Domains (gTLDs) are being expanded. They will allow for more innovation, choice and change to a global Internet presently served by just 21 generic top-level domain names.

A draft Applicant Guidebook describing the detailed application process has been developed with opportunities for public comment. Additional information on the Program can be found here.

ICANN is a not for profit corporation dedicated to coordinating the Internet's addressing system. Promoting competition and choice is one of the principles upon which ICANN was founded. In a world with 1.5 billion Internet users (and growing), diversity, choice and innovation are key. The Internet has supported huge increases in choice, innovation and the competition of ideas and expanding new gTLDs is an opportunity for more.

For those interested in knowing more about the process, program and future meetings please visit the New gTLD Program webpage.

An online wiki outlines progress on the overarching issues and can be found here.

Posted by Marty Schwimmer at 10:21 AM | Permalink | Comments ()

BLT: Oscar Hosts Sue Indian Cybersquatters

Posted by Marty Schwimmer at 10:45 AM | Permalink | Comments ()

TechFlash: "Zillow.com vs iZillow.net"

Posted by Marty Schwimmer at 09:08 AM | Permalink | Comments ()

Domain Name Wire: Hewlett-Packard Wants .HP Domain Name

Posted by Marty Schwimmer at 04:40 PM | Permalink | Comments ()

UBid has an incontestable registration in uBid. It has sued domain name registrat GoDaddy for various activities monetizing domain names that include the strings UBID and YOUBID. The meat of the allegations are in paras 22-26.

Complaint Ubid v Godaddy

Posted by Marty Schwimmer at 04:49 PM | Permalink | Comments ()

Washington Post: Most Spam Sites Tied to Just 10 Registrars

1. XinNet Cyber Information Company Limited
2. eNom
3. Network Solutions
4. Register.com
5. Planet Online
6. Regtime Ltd.
7. OnlineNIC Inc.
8. Spot Domain LLC
9. Wild West Domains
10. Hichina Web Solutions

I suppose that one way to give these numbers meaning would be to compare the number of 'spam sites' to the number of all domain names registered by that registrar.

Posted by Marty Schwimmer at 10:07 AM | Permalink | Comments ()

YEAR NUMBER OF CASES

1999 1
2000 1857
2001 1557
2002 1207
2003 1100
2004 1176
2005 1456
2006 1824
2007 2156
2008 2329

Posted by Marty Schwimmer at 09:09 AM | Permalink | Comments ()

CitiGroup brings in rem action in Virginia against various CITI-variant domain names.

Complaint Citigroup in Rem

Posted by Marty Schwimmer at 12:45 PM | Permalink | Comments ()

Something happened to the domain name owned by my hosting company. That's why I haven't been able to post for a week. The story is coming to be in bits and pieces. Stolen credit card number, expired domain name, etc. I hope my hosting company knows a good IP lawyer.

Posted by Marty Schwimmer at 10:08 AM | Permalink | Comments ()

Via the Intellectual Property Constituency of ICANN, we learn that hte Board has unanimously adopted the following resolution regarding the protection of trademarks in the proposed new top level domains:

"Whereas, based on the public comment submissions received regarding new gTLD draft applicant guidebook, ICANN staff has determined that the implementation issues involving trademark protection need additional community input and analysis. These issues exist today within the existing gTLDs.

"Whereas, members of the community with knowledge and expertise in this area have proposed a way to synthesize the comments received in this area, and, with input from the broader community, including WIPO, propose solutions to the staff on these issues in a timely manner.

"Whereas the board recognizes that resolution of these issues would be beneficial to the introduction of new gTLDs, it is, therefore, resolved, that the board requests the GNSO's intellectual property constiuency, in consultation with staff, to convene an implementation recommendation team comprised of an internationally diverse group of persons with knowledge, expertise, and experience in the fields of trademark, consumer protection, or competition law, and the interplay of trademarks and the domain name system to develop and propose solutions to the overarching issues of trademark protection in connection with the introduction of new gTLDs.

"It is further resolved that the implementation recommendation team will be comprised principally are from the organizations and persons that proposed such solutions in the public comment period on the first draft applicant guidebook, and the implementation recommendation team would use the solutions proposed in the public comments as its starting point for development.

"the board directs the implementation recommendation team to solicit input from the interested constituencies prior to its first session to ensure broad community input at the outset of its work.

The board further directs (1) staff to provide a dedicated staff person and additional staff resources as staff determines to facilitate the work of the implementation recommendation team and (2) reasonable travel support be provided to up to 15 members of the implementation recommendation team for the purpose of conducting two face-to-face meetings in hub cities.

"the board further requests that the implementation recommendation team distribute its draft report by the 24th of April, 2009, to interested members of the community for comment, and propose a final report to be published no later than the 24th of May, 2009, for consideration by the ICANN community at the Sydney meeting."

Posted by Marty at 01:49 PM | Permalink | Comments ()

DomainName Wire: Psion Wants Intel's NETBOOK.COM Under Cybersquatting Statute

Posted by Marty at 09:14 AM | Permalink | Comments ()

Plaintiff, Daniel Philbrick, or affiliated companies or predecessors in interest operate various businesses in the sports field under the name PHILBRICK'S SPORTS or variants thereof, since 1983. He used the domain name PHILBRICKSSPORTS.COM and others. Defendant eNom (a registar) obtained the domain name PHILBRICKSPORTS.COM (one S) and several others, and ran keyword ads relating to sports. It is not quite clear how eNom obtained all the names and why it didn't transfer them to plaintiff (the decision indicated that at some point it deactivated the names in order to transfer them to plaintiff, but didn't).

Plaintiff brought, inter alia, an ACPA cause. Defendant eNom prevailed at summary judgment, as the judge held that plaintiff failed to prove secondary meaning in the mark PHILBRICK'S SPORTS.

I haven't seen the evidence in the record but what is reported in the deicsion seems to be sufficient to establish that PHILBRICK's SPORTS functions as a trademark. This is despite the fact that the judge didn't seem to give the plaintiff any benefit of the doubt (and despite the judge finding that the 'intentional copying as evidence of secondary meaning' argument as being circular.

But consider that it seems uncontested that the mark PHILBRICK'S was used in interstate commerce in relation to sports since 1983. The PTO gives a presumption of secondary meaning after 5 years of use. Also consider the following: defendant earned $183 in click-though advertising from the name (I'm not sure what period of time that covers). I'm guessing here but the usual 'page o' links' operated by a domainer, doesn't have links to it, which suggests that people are only arriving at PHILBRICKSPORTS.COM by typing that name into an address bar. We don't know how many people total landed at the site (that would have been a useful fact), but enough to generate $183 in click-throughs. It seems to me that the fact that a lot of people are taking the trouble to type PHILBRICKSPORTS.COM into an address bar is evidence of secondary meaning of the name serving as a source of origin.

Read the decision, tell me what you think.

Prof. Goldman doesn't see it the way I do.

Coupla additional practice pointers here: (1) file trademark applications and get that presumption of registrability; (2) alleging fame can be a distraction from your stronger causes; and (3) UDRP first?

Complaint Philbrick

Posted by Marty at 08:49 PM | Permalink | Comments ()

TechCrunc: ToysRUs Buys TOYS.COM

Posted by Marty at 04:36 AM | Permalink | Comments ()

I'm quoted in today's BNA Electronic Commerce & Law Report: "Celebrity Names Disputes Under UDRP: Challenges, Contours, Likely Outcomes," 14 ECLR 256, 2/25/09 (no link, walled garden).

While we're talking about celebrity name disputes, I was once copied on an email that Catherine Zeta-Jones was copied on as well. I'm not lying.

Posted by Marty at 12:28 PM | Permalink | Comments ()

I just received a Facebook friend request from someone I brought a UDRP against five years ago.

Posted by Marty at 11:47 AM | Permalink | Comments ()

A domain name is not a gambling device. Coverage here.

Posted by Marty at 10:34 AM | Permalink | Comments ()

This is a fairly complex fact pattern. Defendants may have hacked plaintiff's website, stole its code, stole its domain names, set up a counterfeit website, sent a bad faith DMCA notice against plaintiff, forged asset transfer documents, and did other bad things. Plaintiff brings trademark, copyright, in rem ACPA and other assorted causes of action.

Plaintiff PHP LIVE! gives some information here.

Complaint Php Live

Posted by Marty at 08:37 PM | Permalink | Comments ()

WSJ.com: "What's in a Name? $50k, Perhaps, If You're the Victim of Cybersquatting":

Cybersquatters, beware. Verizon said it’s been awarded $33.2 million in a default ruling against a San Francisco firm.

The default ruling, according to Verizon, said the firm, registrar OnlineNIC, “unlawfully registered at least 663 domain names that were either identical to or confusingly similar to Verizon trademarks.” The company was awarded $50,000 per name for OnlineNIC’s “bad-faith registrations” that were intended to steer traffic away from Verizon’s sites, it said.

Posted by Marty at 05:04 PM | Permalink | Comments ()

Pro Goldman on why we don't many trademark class action suits.

Posted by Marty at 04:13 PM | Permalink | Comments ()

Domain Name Wire: "Commentary: Why Standard Tactics is a Problem":

The domain industry has a black mark on its record and a public image problem because of cybersquatting and typosquatting. GoDaddy isn’t helping. Standard Tactics owns trademarked domain names. We don’t know how many, but based on existing UDRP filings and domains that have closed on TDNAM, you can bet it’s substantial. Names like GetGenericAmbien.com and JunoDSL.com are clear trademark violations. By owning these domains (until they were served arbitration papers) GoDaddy is perpetuating the problem.

Posted by Marty at 10:17 AM | Permalink | Comments ()

TechCrunch: "GoDaddy Uses 'Standard Tactics' To Warehouse Domains":

Warehousing and auctioning off expired domain names is not necessarily against ICANN (the governing body over domain name registration) regulations and actually quite a common practice among larger registrars, but the story only gets interesting when you take a look at what goes on behind the transparent part of it. When a valuable expired domain doesn’t sell through an auction on The Domain Name Aftermarket (aka TDNAM, GoDaddy’s auction platform), The Go Daddy Group changes the ownership of the domain to one of its lesser known subsidiaries, Standard Tactics LLC, using Domains By Proxy’s whois privacy service to hide its identity. Next thing you know, that company will start monetizing the domain names using parked domain pages filled with ads and list the domains for resale on TDNAM.

Posted by Marty at 02:32 PM | Permalink | Comments ()

The Intellectual Property Constituency of ICANN sent around an email this morning suggesing that at first glance, the registry monthly reports for July, the first month in which ICANN instituted a .20 fee on all domain name registrations in order to cut down on the practice of 'domain tasting' (the registration of domain names for 5 days without a fee), there has been an 84% decrease in domain names deleted after the 5 day grace period.

Posted by Marty at 09:41 AM | Permalink | Comments ()

IBL: "HOBBIT" Domain Names are Reclaimed by Tolkein Enterprises

Posted by Marty at 10:49 AM | Permalink | Comments ()

ABA Journal: Pennsylvania Law firm Claims Websites Free-Ride On Its Name":

A Pennsylvania law firm has sued a Canadian domain name registry, claiming that it helped create websites that free-ride on the Hourigan, Kluger & Quinn name.

Posted by Marty at 04:02 PM | Permalink | Comments ()

The Guardian: "Computers are the only worthwhile assets banks have left":

Even as the short-selling vultures began circling Lehman Brothers, HBOS, Merrill Lynch and co, a legion of entrepreneurs began betting on domain names for hastily merged financial institutions. For example, when Barclays and Bank of America began to emerge as buyers for Lehman, names such as barclayslehman.com and bofalehman.com were promptly registered by enterprising hopefuls.

Hat tip Boing Boing.

Posted by Marty at 08:22 AM | Permalink | Comments ()

Posted by Marty at 01:10 PM | Permalink | Comments ()

Well that's interesting. DrillBabyDrill.com.

Posted by Marty at 09:52 PM | Permalink | Comments ()

The Intellectual Property Constitutency of ICANN has released this paper on sunrise mechanisms for opening new generic top level domain names.

Posted by Marty at 12:00 PM | Permalink | Comments ()

Registrant obtained COLLECTIVEMEDIA.COM in 2002. Opponent begins use in 2005, brungs UDRP. Held: opponent should have known it would lose. Collective Media, Inc. v CKV . COLLECTIVEMEDIA.COM WIPO D2008-0641.

Posted by Marty at 10:37 AM | Permalink | Comments ()

Registrar Com Laude (run by friends of the blog Nick and Lorna) on the new gTLDs:

Posted by Marty at 03:25 PM | Permalink | Comments ()

ICANN cleared the way today for a wider scope of generic top level domain names.

The more land there is, the less valuable individual parcels are.

ArsTechnica coverage here.

SlashDot coverage here.

Circle ID coverage here.

IP Watch coverage here.

Please leave a comment.

Posted by Marty at 04:00 PM | Permalink | Comments ()

Yahoo goes after lottery hoax email spammers. Coverager here.

Posted by Marty at 12:46 PM | Permalink | Comments ()

Commentary from Domain Name Wire on recently distributed 'worst registrar' list and ICANN action thereto.

Posted by Marty at 12:13 PM | Permalink | Comments ()

ZDNET: "Top Ten Worst Spam Registrars Notifed By ICANN":

The top ten 'worst spam registrars' are:

1. Xinnet Bei Gong Da Software
2. BEIJINGNN
3. Todaynic
4. Joker
5. eNom
6. Monker
7. Dynamic Dolphin
8. The Nameit Co/AITDOMAINS.COM
9. PDR
10. Intercosmos/DIRECTNIC

A discussion of the different metrics used and commentart on the methodology is at the ZDNet article.

Posted by Marty at 02:38 PM | Permalink | Comments ()

Yes, if you use it as a trademark, in addition to using it as a domain name.

Trademark use: We are EXAMPLE.COM
Trademark use: We are EXAMPLE
Not trademark use: Visit us at EXAMPLE.COM

TTABlog on case about someone who didn't read this post.

Posted by Marty at 01:47 PM | Permalink | Comments ()

Dear AOL:

I'm the member of the family that usually buy the tickets online using 777film.com. Today my wife attempted to. She typed in 777films.com by mistake, and assumed she was on your site. Apparently you don't own 777films.com. She was actually confused. And a little annoyed at you.

Sincerely,

A Customer

Posted by Marty at 01:27 PM | Permalink | Comments ()

. . . and there is something in particular that you would like to see discussed, please email me at marty at symbol schwimmerlegal dot com.

Posted by Marty at 04:17 PM | Permalink | Comments ()

You can also attend by conference call and we mail you your choice of roast beef wrap or grilled vegetable medley.

Details on the domain name roundtable to be held at our NY offices here.

Posted by Marty at 09:24 AM | Permalink | Comments ()

ArsTechnica: "Keeping Networok Solutions from Cashing In On Your Subdomains":

Earlier this week, a report at TechCrunch pointed out that a number of subdomains at GotGame.com pointed to generic Network Solutions pages with spammy text links. A number of observers across the Internet found other sites that were hosted through Network Solutions and experiencing the same issue. It appeared as if Network Solutions was taking advantage of its customers by hijacking subdomains and profiting from them without the domain owners' permission.

Well, it turns out that that's not entirely true.

Posted by Marty at 09:12 AM | Permalink | Comments ()

WIPO: DNS Developments Feed Growing Cybersquatting Concerns:

Last year, a record 2,156 complaints alleging cybersquatting - or the abusive registration of trademarks on the Internet - were filed with the World Intellectual Property Organization’s (WIPO) Arbitration and Mediation Center (Center), representing an 18% increase over 2006 and a 48% increase over 2005 in the number of generic and country code Top Level Domain (gTLDs and ccTLDs) disputes.

Posted by Marty at 01:49 PM | Permalink | Comments ()

Example of cybersquatting complaint under in rem provision of ACPA arguing that Verisign is located in Massachusetts because it's registered to do business in Massachusetts.

Posted by Marty at 12:24 PM | Permalink | Comments ()

A motion to dismiss has been decided in the Vulcan Golf class action against various PPC companies including Google. RICO charges and some torts out - cybersquattign stays in.

Posted by Marty at 04:44 PM | Permalink | Comments ()

Cabel.name: Japan" "URL's Are Totally Out", wherein the author notes a trend in Japanese advertising to encourage viewers to type in a certain term into a search box instead of navigating via a URL.

It makes sense, right? All the good domain names are gone. Getting people to a specific page in a big site is difficult (who's going to write down anything after the first slash?). And, most tellingly, I see increasingly more users already inadvertently put complete domain names like "gmail" and "netflix" into the Search box of their browsers out of habit — and it doesn't even register that Google pops up and they have to click to get to their destination.

The author concludes that in the future, the url window and embedded search window will trade sizes to look like this:

I think that this if this is in fact the trend in Japan then it is very important for trademark owners. When I ponder things like the PPC industry, and domain tasting, and front-running, and a seemingly endless parade of sunrise periods, and an endless stream of emails from the Intellectual Property Consitutency of ICANNs seeking written comments about the latest outrage, I am left with the conclusion:

The domain name system is damage and the trademark community should route around it.

I think that educating the audience to use search engine terms rather than URLs is a step in that direction.

Thanks to Cabel for spotting this.

Posted by Marty at 11:43 AM | Permalink | Comments ()

News.com: Porn-friendly .xxx domain backer loses suit against federal agencies

The company behind the proposed .xxx top-level domain, which was rejected after the Bush administration intervened, has been trying to dig up embarrassing government documents through a federal lawsuit.

Make that "was trying." A federal judge on March 12 granted summary judgment to the Bush administration in the Freedom of Information Act lawsuit brought by the ICM Registry.

Posted by Marty at 10:30 AM | Permalink | Comments ()

I will be hosting an INTA Roundtable on INTERNET DOMAIN NAMES: A TRADEMARK PRACTITIONER'S POINT OF VIEW at the Trademark Blog World Headquarters, also known as the offices of Moses & Singer, in the Chrysler Buidling in midtown Manhattan, April 14. Register through INTA. Attendance is limited. Discussion outline here.

Posted by Marty at 10:16 AM | Permalink | Comments ()

The Legal Satyricon: "Is GoDaddy A Mass Cybersquatter?":

These pay-per-click pages and their operators are the parasites of the internet. I love when they put some goddamned phrase at the top like “find something interesting” or “helping you find what you need.”

Far from “helping you find what you need,” these sites do nothing except divert traffic from its intended destination. Trying to wipe them out is like playing whack-a-mole. Go find your favorite website. Lets presume that it is “The Drudge Report.” Now type in http://wwwdrudgereport.com/ (note that I forgot the period). Click it and see where you wind up - certainly no where near the Drudge Report. You can do this all day long — and you’ll find these crappy and annoying pages everywhere. I suspect that they outnumber “legitimate” websites at this point.

Posted by Marty at 10:42 AM | Permalink | Comments ()

Adult website model wants domain name back. Coverage here.

Posted by Marty at 10:41 AM | Permalink | Comments ()

I suppose I'm giving away my reaction to the decision. Murdoch announced the Fox Business Channel on February 8, 2007. Respondent registered FOXBUSINESSNETWORK.COM that same day, but alleged prior use dating back to 2002. Decide for yourself (by the way, this is an 'embedded' document using the Scribd iPaper service. The button in the upper right corner allows you to view the document in full screen mode):

Posted by Marty at 04:58 PM | Permalink | Comments ()

CircleID: "The Liabilities for the Corporations and/or their Lawyers":

This post is based on the scenario that a trademark.tld domain name is registered with a UK ICANN accredited registrar, (they have an exclusive UK jurisdiction clause in their contracts), the trademark.tld criticism website located at that domain name is strictly non-commercial, the servers are located in the UK, and the registrant is a British citizen.

In the above circumstances, the corporations and/or their lawyers are taking a big risk when they use the UDRP in order to silence criticism at trademark.tld

Posted by Marty at 01:34 PM | Permalink | Comments ()

Yourethemandog.com
Yourthemandog.com
Youthemandog.com
Yourethemannowdog.com
Yourthemannowdog.com

inspiration: Kottke

Posted by Marty at 07:20 PM | Permalink | Comments ()

Russia Profile: "Trademark Squatters Profit at the Expense of Multinationals":

Starbucks is one of hundreds of foreign brands that have become targets of Russian trademark squatters. The American company first registered its trademark in the country in 1997, but did not open any stores here because of the economic crisis in 1998. The trademark was not used for three years after the registration and therefore became void. It was at this point that Sergei Zuykov, Russia’s most famous trademark squatter, stepped in and registered it in his name. In 2005, Zuykov suggested that Starbucks pay $600,000 for the right to use their name in Russia.

The dispute was on the agenda at WTO talks between Russia and the United States in fall 2005. According to unofficial reports, Arkady Volsky, the head of the Russian Union of Industrialists and Entrepreneurs, met Zuykov to ask him to back down. “I didn’t meet Volsky,” Zuykov said. “I met his advisor, who said: ‘If you’re ready to give up all the claims, then you can go and shake Volsky’s hand.’ I didn’t want to shake hands with Volsky.”

Posted by Marty at 02:02 PM | Permalink | Comments ()

CNN.com: Domain Name Game Still Going Strong.:

Demand Media, based in Santa Monica, Calif., received $100 million in a funding round last July, led by Goldman Sachs (NYSE:GS) GS. Demand Media has raised $320 million since its launch two years ago.

Another big player, Oversee.net, last month said it received $150 million in a funding round from private equity firm Oak Hill Capital Partners. Oversee.net owns 700,000 domain names and helps service and maintain another 2.4 million domains owned by others.

Oversee also has a $100 million credit line from Bank of America . . .

Posted by Marty at 11:11 AM | Permalink | Comments ()

Interesting Nominet decision finding for MySpace, even though registrant had apparently registered the name before MySpace launched.

MySpace, Inc. v Total Web Solutions Ltd.. Nominet DRS 04962 (Notice of Intent to Appeal Received).

Out-Law commentary here.

Posted by Marty at 10:29 AM | Permalink | Comments ()

NY Times: "Coins in the New Realm":

"Mr. Buck and other domainers profit when inexperienced Internet users type those names into their Web browsers, and once on the site click on related advertisements. In the longer term, they hope to resell their domain names for large profits to companies that want to build real businesses with those Web addresses.

. . . Domain-name trading takes little of the actual effort needed to build a business on the Web, instead relying on clicks from people who simply guess at a site’s name or are too lazy to use a search engine. In its early years, the field was dominated by offshore players and secretive, if not illegal, tactics.

But increasingly, there is serious money at stake. Last year, 106 domain names drew more than $100,000 each, and one, porn.com, went for nearly $9.5 million. In 2006, only 70 domain names sold for more than six figures each. Millions of generic domain names, pointing to sites with little more than automated Google or Yahoo text ads, brought in untold millions of dollars."

Posted by Marty at 09:44 AM | Permalink | Comments ()

www.nytmes.com leads to newspaperarticlesfree.com.

Posted by Marty at 09:42 AM | Permalink | Comments ()

ICANN: ICANN Board Recommends Action on Domain Tasting:

The Internet Corporation for Assigned Names and Numbers is looking to effectively end domain tasting with a proposal to start charging the annual ICANN fee on registrar domain registrations.

Domain tasting is the use of the Add Grace Period to test the profitability of a domain name registration. The AGP is a five-day period following the initial registration of a domain name when the registration may be deleted and a credit can be issued to a registrar.

"Domain tasting has been an issue for the Internet community and ICANN is offering this proposal as a way to stop tasting," said Dr Paul Twomey, ICANN’s President and CEO. "Charging the ICANN fee as soon as a domain name is registered would close the loophole used by tasters to test a domain name’s profitability for free."

Posted by Marty at 12:27 PM | Permalink | Comments ()

Information Week: Google Takes Aim At Domain Tasting Profiteers:

Google is planning to introduce a system to detect a form of domain registration abuse known as domain kiting. In so doing, the company stands to lose millions in advertising revenue, though it may gain far more in user trust and goodwill.

Registrants of Internet domains generally have a five-day grace period between the time a domain is registered and the time payment for the domain is due. This five-day period is used by domain profiteers for domain tasting -- testing the ad revenue generated at a given domain and then returning unprofitable domains -- and for domain kiting -- deleting newly registered domains within the grace period then immediately re-registering them to reset the grace period and postpone payment.

Rumor of Google's move published on Thursday.

Posted by Marty at 01:21 PM | Permalink | Comments ()

ICANN: GNSO Initial Report on Domain Tasting

Conclusion: Domain Tasting is of 'significant concern' and therefore there should be a 'policy development process' to 'explore policy changes.'

Posted by Marty at 10:55 AM | Permalink | Comments ()

MSNBC.COM: "Internet Agency To Battle Domain Name 'Tasting'"

In a draft report issued this week, the Internet Corporation for Assigned Names and Numbers outlined key issues for a committee to study further and craft recommendations. A final report is due after a public comment period closes Jan. 28.

Don't expect any immediate relief. The committee, the Generic Names Supporting Organization, could take months or years to review the matter, after which ICANN's board still would have to vote on any changes.

The operators of the ".org" suffix already won approval to charge companies that make too many returns. The number of deletions dropped to 152,700 in June, compared with 2.4 million in May, after the new fee took effect.

Posted by Marty at 12:46 PM | Permalink | Comments ()

Folks are afraid of domain name front-running, that is to say that they fear that someone will intercept a whois look-up and register the name ahead of then. In fact, in the pre-ICANN days when the old NetSol wouldn't require payment up front, it made sense to register a name rather than look it up (and now in the era of domain name tasting the same logic applies).

So today we learn the following. If you go to (the new) NSI's whois, and type in any available string, for the following four days that string will show up as a name registered to "This name available through NSI." You (or, as far as I can tell) anyone else over the next four days) can only buy that name through NSI (at it's regular retail price). During those four days, the name, say, NSIISTEALINGMYNAME.COM will look like this.

So, to the best of my understanding, if you were to search for the name WHICH-REGISTRAR-WILL-SUE-NSI-FIRST.COM now, and it was available, and you closed your browser terminating your search, for the next four days that string will show up as UNAVAILABLE in every other registrar's whois, and as available in NSI's whois, and anyone can register the name through NSI for the next four days.

NSI's spokesperson has responded as follows:

“I’d like to clarify what we are doing. In response to customer concerns about Domain Name Front Running (domains being registered by someone else just after they have conducted a domain name search), we have implemented a security measure to protect our customers. The measure will kick in when a customer searches for an available domain name at our website, but decides not to purchase the name immediately after conducting the search.

After the search ends, we will put the domain name on reserve. During this reservation period, the name is not active and we do not monetize the traffic on these domains. If a customer searches for the domain again during the next 4 days at networksolutions.com, the domain will be available to register. If the domain name is not purchased within 4 days, it will be released back to the registry and will be generally available for registration.

This protection measure provides our customers the opportunity to register domains they have previously searched without the fear that the name will be already taken through Front Running.

You are correct that we are trying to take an arrow out of the quiver of the tasters. As you know, domain tasters are the largest Front Runners. Due to no fault of registrars, Front Runners purchase search data from Internet Service Providers and/or registries and then taste those names. Some folks may not agree with our approach, but we are trying to prevent this malicious activity from impacting our customers.”

Well, I suppose that there is a certain of subset of people who wil search on NSI, not immediately register, and want to register over the subsequent four days. If NSI's program does in fact protect such people from front-running, then NSI is acknowledging that the connection between the whois searcher and NSI's server is not secure. It's worth exploring why.

BUT LET'S NOT FORGET THIS SCENARIO:

Your namesearcher is searching EXAMPLE1 through EXAMPLE50 for you. Your name searcher doesn't have a credit card and you're not authorized to spend the money on ten names so you can't snap up all ten. Someone hear's a rumor that you're considering EXAMPLE4 as a name. They check the name and now they know that someone has searched the name on whois within the past 4 days.

So everyone is forced to be a name taster now.

Posted by Marty at 02:31 PM | Permalink | Comments ()

BusinessWire: "Moniker Joins Oversee.net"

About Oversee.net

Founded in 2000, Oversee.net is a technology-driven online marketing solutions company with two primary divisions--Oversee Domain Services and Oversee Marketing Services. Headquartered in Los Angeles with offices in Portland, Oregon and San Mateo, California, the Company has over 200 employees. Some of Oversee’s key brands include SnapNames®, the operator of the largest available source of expired and deleting domain names; DomainSponsor™, a global leader in domain monetization, and Low.com™, a top consumer financial services portal. Oversee has been growing profitably since inception.

Oversee was named to the Inc. 500 and ranked third in the Deloitte Technology Fast 50 of Los Angeles and 18th in the nation. Oversee was also named “Internet and New Media Company of the Year” by the Technology Council of Southern California and its CEO and Co-Founder, Lawrence Ng, was named a winner of the 2007 Ernst & Young Entrepreneur of the Year award for the Greater Los Angeles program in the technology category. To learn more, please visit http://www.oversee.net.

About Moniker.com

Moniker, with headquarters in Pompano Beach, Florida, is the leading provider of Domain Asset Management™, a complete set of business services that provide companies a single-point-of-access to help manage and maximize the value of their domains. With more than a decade of experience, Moniker is a top 10 domain registrar, holds the industry’s highest customer retention rate and pioneered the industry’s first domain appraisal formula. It is considered the industry’s premier marketplace to buy and sell premium domain names. For more information, visit http://www.moniker.com.

Posted by Marty at 12:30 PM | Permalink | Comments ()

Scotsman.com: "US Mogul Foils Web Name Hijack Scheme":

An American multi-millionaire has come to the rescue of a Leith businessman whose website was hijacked by a hacker.

Internet mogul Bob Parsons owns the domain registry firm GoDaddy.com which web designer David Airey used to log his own site.

Posted by Marty at 12:22 PM | Permalink | Comments ()

Hoerbiger sells automation and compressor equipment under the name HOERBIGER. Texas International Property Associates registered the name HORBIGER.COM and provides links relating to automation and compressor equipment. Hoerbiger brought a UDRP and in October, the panelist found for it, ordering transfer of the name. TIPA brought a suit in Texas state court requesting a stay of the transfer. The suit has now been removed to federal court (TIPA v. Hoerbiger Holdings, 3:07-cv-02099 ND Texas).

Dallas Morning News story on TIPA here.

Posted by Marty at 10:40 AM | Permalink | Comments ()

NY Times: "The Lotts, Lobbying and Domain Name Defense":

"A report confirming an online union between Senator Trent Lott and former Senator John Breaux — breauxlott.com — raised questions because Mr. Lott is not allowed to join the lobbyist ranks for some time and has played down the prospect."

Posted by Marty at 01:17 PM | Permalink | Comments ()

Funeral home alleges that rival funeral home registered a domain name reflecting its name. Alpson, Inc. dba Porto Funeral Home v. East Haven Memorial Funeral Home, Inc. and James Brennan, (D Conn Dec 8 2007).

Tombstone generator here.

Posted by Marty at 05:16 PM | Permalink | Comments ()

Interesting idea. Out-Law.com: "Business Should Fund Domain Name Police":

A technology law expert has called on the business world to set up a policing outfit to tackle cybersquatters. The call came as Dell raised the stakes in the fight against domain hoarders, demanding compensation of $1 million per name in a lawsuit.

Posted by Marty at 09:19 AM | Permalink | Comments ()

Good short (5 page) paper by UK domain name registry Nominet on domain name monetization.

Posted by Marty at 12:31 PM | Permalink | Comments ()

Discourse.net: "Can Typosquatting Be Counterfeiting?"

"The story there is about Dell bringing a very large and organized case against a bunch of domain tasters (people who register domain names for a very brief period then drop them, so they don’t have to pay for them) who were apparently typosquatting on a grand scale.

Posted by Marty at 11:47 AM | Permalink | Comments ()

The anti-virus people, McAfee, have released a report on typo-squatting. Among their conclusions is that a consumer who mis-spells a popular web site URL has a 1 in 14 chance of landing on a typo-squatter site.

Posted by Marty at 01:58 PM | Permalink | Comments ()

Plaintiff owns BIOCALTH trademark. Domains by Proxy customer had been using BIOLAWSUIT.COM for a Chinese language site that seemed to refer to a lawsuit relating to BIOCALTH (archive.org page here), the pages of which allegedly reproduced the BIOCALTH logo (the page is down as of this writing). Domains By Proxy doesn't give up name, Plaintiff sues Domains By Proxy and registrar Go Daddy.

Giantceutical v. Domains By Proxy, CV 07-07309 (JTL) (CD Cal Nov 3 2007)

Posted by Marty at 08:01 PM | Permalink | Comments ()

After domain name registrar refused to disclose the identity of the registrant of InstitutionalHartfordLife.com, Hartford Life sued Moniker in the Southern District last week. Via Justia.com docket search. Hartford Fire Insurance, et. al. v. Moniker Online Services, LLC and John Does 1-10, 0 Civ 9729 (S.D.N.Y. Nov. 2 2007).

Posted by Marty at 09:15 PM | Permalink | Comments ()

In the old pay-per-impression days, John Zuccarini reportedly made $1 million a year registering typo-sites such as bobthebiulder.com and teltubbies.com. I brought a UDRP against him, maybe you did too. It is thought that the Truth in Domains Act was targeted at Zuccarini, who was the first person ever arrested under it, and was imprisoned for 14 months. I can't find any report that anyone else was ever arrested under the Act. Which may speak well of its deterrent effect.

However a prison sentence may not have deterred Zuccarini. According to this article, the FTC alleges that he is still engaging in a 'domain name registration scam' utilizing 'affiliate marketing programs.' No specific names or sites are cited.

I am asked: what is pay-per-impression. This refers to one of the earlier, failed, models of internet advertising, where the website owner was paid for the number of times that its site was viewed. Because the site hosting the ad was paid regardless of whether the person viewing the ad had any interest in the ad or not, the model encouraged misdirected traffic.

Posted by Marty at 10:15 AM | Permalink | Comments ()

DomainNameWire.com: "GoDaddy Increases .Com Prices 12%"

Posted by Marty at 01:19 PM | Permalink | Comments ()

CBS4Denver: "More & More Parents Get Domain Names For Babies":

"If the domain is not already taken, we can pretty much guarantee its going to be taken 15 years from now, when your kid's old enough to use it," he said.

Posted by Marty at 01:12 PM | Permalink | Comments ()

EarthTimes.org: "Russian Standard Vodka and Forbes Win 2007 Domain Name and Internet Traffic Industry Awards":

"This year's winners are Russian Standard Vodka and Steve Forbes, CEO of Forbes, Editor-in-Chief of Forbes Magazine and former presidential candidate (who also delivered the conference's keynote address). The domain name and Internet traffic industry's version of the Academy Awards, We Get It! is bestowed upon the organization or individual(s) that has best demonstrated an understanding of the power of domains and the Internet by attracting visitors, increasing sales and beating competitors in terms of Internet marketing."

Posted by Marty at 01:00 PM | Permalink | Comments ()

WSJ.com: "What's the Hindi Word for Dot-Com?":

"Long-dominated by English, the language of its founders, the Internet is about to take a big step toward becoming a truly world-wide Web.

Starting on Monday, Web surfers will be able to test Internet addresses in 11 languages that don't use the Roman alphabet -- the 26 letters used in English and most other European languages."

Posted by Marty at 10:30 AM | Permalink | Comments ()

Austn360.com: "The Ethics Of Domain Name Selling"

A few days ago, I got an e-mail from someone who wanted to buy the domain. The man said he and his wife were starting a baby-related business and wanted to use babycation.com. . . .

And now I feel terrible. I feel greedy. I feel like I should write the guy back and offer to give him the domain on the cheap and help him and his wife out."

This is an illustration of how the domain name system sometimes function as a tax on small business.

Posted by Marty at 10:07 AM | Permalink | Comments ()

. . . then you can go to Moniker and download the list of asking prices for an upcoming auction.

Posted by Marty at 01:27 PM | Permalink | Comments ()

When I begin a matter involving a third-party website, the first step is to do a 'work-up,' that is to say, find out the domain name registrant, hosting service, etc. This article from the Virtual Hosting Blog (really intended for competitive analysis), is a good collection of tools useful in obtaining background information on a website.

Posted by Marty at 10:21 AM | Permalink | Comments ()

ADMINISTRATIVE PANEL DECISION

Facebook Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT

Case No. D2007-1193

1. The Parties

The Complainant is Facebook Inc. of Palo Alto, California, the United States of America, represented by Heller Ehrman LLP, the United States of America.

The Respondent is Privacy Ltd. Disclosed Agent for YOLAPT of Isle of Man, the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name is registered with Fabulous.com Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2007. On August 15, 2007, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On August 16, 2007, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on August 15, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with Paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 21, 2007. In accordance with Paragraph 5(a) of the Rules, the due date for Response was September 10, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2007.

The Center appointed Brigitte Joppich as the sole panelist in this matter on September 18, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Paragraph 7 of the Rules.

4. Factual Background

The Complainant in this administrative proceeding is Facebook, Inc., a Delaware corporation having its principal place of business in Palo Alto, California, the United States of America. The Complainant was founded in 2004 and is a recognized leader in providing online social networking services and related products and services. Currently, the Complainant has more than 31 million active users of its online services, and its website at “www.facebook.com” is the sixth-most trafficked website in the United States of America. The Complainant is the owner of numerous FACEBOOK trademarks that are registered in many countries worldwide, inter alia, a word mark FACEBOOK (Reg. No. 3122052) filed on February 24, 2005 with the United States Patent and Trademark Office and stated to have been first used in commerce at least as early as February 4, 2004 (the “FACEBOOK Marks”), and a European Community Trademark for FACEBOOK (Reg. No. 2483857) with a registration date of June 13, 2003 (to which the Complainant states it is the successor-in-interest). The FACEBOOK Marks mostly designate the provision of online chat rooms for transmission of messages as well as an online directory information service, both concerning collegiate life, classifieds, virtual community and social networking.

The Respondent in this administrative proceeding is Privacy Ltd. Disclosed Agent for YOLAPT. The disputed domain name was first registered on October 3, 2004. At “www.face-book.com”, the Respondent provides, inter alia, advertising for and links to other commercial websites offering social networking and information services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in Paragraph 4(a) of the Policy is present in this case:

(i) The domain name is identical or confusingly similar to the Complainant’s FACEBOOK Marks.

(ii) The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name as the Respondent has not registered the mark FACEBOOK anywhere in the world, is not a licensee of the Complainant, does not produce or market any of its own goods or services under the FACEBOOK name or mark but simply uses the website at “www.face-book.com” as a portal site, listing advertisements and links to other commercial websites that offer goods and services highly similar to those of the Complainant. Furthermore, the Respondent does not use the domain name in connection with a bona fide offering of goods and services and is not commonly known by the domain name. Finally, the Respondent is not deemed to make any legitimate noncommercial or fair use of the domain name as it merely diverts customers to other commercial websites.

(iii) The Complainant finally contends that the domain name was registered and is being used in bad faith as the website at the disputed domain name is used in order to free ride on the Complainant’s reputation and customer goodwill. The Respondent is intentionally diverting Internet users and customers to a website for commercial and financial gain. The Respondent had actual notice of the FACEBOOK Marks and the Complainant as the source of high quality products and services. Since the Respondent appears not to use FACEBOOK in association with any of its own products or services and does not identify its own company by such name, it would have no reason to register and use the disputed domain name unless it was aware of the goodwill associated with FACEBOOK and was attempting to usurp this goodwill. In addition, the Respondent had constructive notice of the Complainant’s prior use of the FACEBOOK Marks that had been used at least for eight months already when the Respondent registered the disputed domain name. The Respondent either knew or should have known of the Complainant’s prominent use of FACEBOOK. Finally, the Complainant contends that the Respondent’s bad faith is evidenced by the lack of any reply to the Complainant’s attempts to contact it by email and by ordinary mail.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under Paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the domain name is identical or confusingly similar to the Complainant’s trademark; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name was registered on October 3, 2004, i.e. quite possibly before the Complainant acquired any trademark rights in the FACEBOOK Marks (it is unclear from the provided material when exactly the Complainant first acquired rights in the European Community Trademark for FACEBOOK, which as noted previously has a registration date of June 13, 2003). However, Paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name. See AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598. The fact that the disputed domain name predates the Complainant’s trademark registration is only relevant to the assessment of bad faith pursuant to Paragraph 4(a)(iii) of the Policy, which is considered below.

The disputed domain name fully incorporates the FACEBOOK Marks and can only be distinguished from them by the hyphen between the words “face” and “book”. Hyphens are generally without legal significance when comparing domain names to trademarks. See X-Copper Legal Services Inc. v. Majid Hashemi, WIPO Case No. 2007-0251; VeriSign Inc. v. Bin g Glu / G Design, WIPO Case No. D2007-0421.

Finally, it is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity or similarity of the complainant’s trademark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.

The domain name is therefore almost identical and in any case confusingly similar to a trademark in which the Complainant has rights, and the Panel finds that the Complainant has satisfied the requirements of Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of Paragraph 4(a)(ii) of the Policy, i.e.

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

The Respondent in this case did not file a response in this proceeding. Therefore, the Complainant’s assertions that the Respondent lacks rights or legitimate interests stand unrebutted. Based on the evidence before the Panel, the Respondent apparently did not make any bona fide offering of goods or services in connection with the domain name and is neither commonly known by the domain name nor contends to make a legitimate non-commercial or fair use of the domain name. Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under Paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, although not exclusive, are evidence of the registration and use of the domain name in bad faith for purposes of Paragraph 4(a)(iii) of the Policy, i.e.

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The two parts of the third requirement of the Policy are generally regarded cumulative conditions: i.e. the Complainant must show that the domain name was registered and is being used in bad faith. This point is clear from the wording of the Policy and has been confirmed ever since Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See Telstra Corporation Limited v. Adult Web Development and Telstraexposed, WIPO Case No. D2002-0952; Telstra Corporation Ltd v. David Whittle, WIPO Case No. D2001-0434; Prada S.A. v. Mr. Chuan Sheng Wang, WIPO Case No. D2003-0758.

As to bad faith registration, on balance, the Panel is convinced that the domain name was registered by the Respondent in bad faith for the following reasons, although the case established by the Complainant is towards the weaker end of the spectrum, noting in particular the absence of provided evidence from which the Panel may assess the extent (or otherwise) of the fame of the name or mark FACEBOOK at the moment of the registration of the disputed domain name:

Firstly, it is important that the name FACEBOOK (consisting of “face” and “book”) is made up of two common terms in an imaginative manner and can generally not be found in dictionaries. It must therefore be considered as inherently distinctive (this is confirmed by the numerous trademark registrations in English-speaking countries worldwide which do not rely on secondary meaning). The Respondent therefore did not register just any generic domain name.

Secondly, taking into account all circumstances of this case, it is difficult to imagine that – eight months after the Complainant’s services were first offered online – the registration of an almost identical domain name that is not generic by a third party is a mere coincidence. The Complainant’s services, by their very nature, became known to the public through the Internet and thus worldwide. Domicile is irrelevant in this regard.

Thirdly, the Respondent has never been offering any products or services of its own or been known under the domain name. It could have given a different meaning to the combination of the words “face” and “book” by using the disputed domain name but preferred to enter into direct competition with the Complainant.

Fourthly, the Respondent is using a privacy shield, and apparently wishes not to be identified. The Panel has considered the possibility that such behavior enables the Respondent to conceal facts that might otherwise be considered as evidence against it.

Finally, the Respondent has not made any effort to defend itself – neither when first contacted by the Complainant nor in the course of these administrative proceedings. The Panel is not of the opinion that the absence of a response in UDRP proceedings is to be considered automatically as an indication of bad faith. Still, cases involving generic domain names must be distinguished from cases concerning inherently distinctive domain names, in particular those where the domain name includes a famous trademark as in this case.

Having regard to these facts, the Panel is convinced on balance that the disputed domain name was registered by the Respondent with actual knowledge of the Complainant’s website at “www.facebook.com”. Actual knowledge of the FACEBOOK Marks is also required and more difficult to establish. Although the Panel does not exclude the possibility that the Respondent may have been aware, at the time of registering the disputed domain, of the European Community Trademark for FACEBOOK, the evidence is not decisive, and the point at which the Complainant itself acquired that mark remains unclear. As a general rule, a domain name is not registered in bad faith if it was registered before the trademark. Still, an exception must be made to this rule where the respondent registered the domain name with speculative intent in full knowledge of the likely use of the trademark by the complainant, and, more particularly, where the respondent hopes to either benefit from confusion and the diversion of web traffic or by selling the domain name to the trademark holder. See e.g., inter alia, ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669; Joe Cole v. Dave Skipper, WIPO Case No. D2003-0843; General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598. Considering the circumstances of the present case, the Panel is of the opinion that the Respondent in all likelihood had such speculative intent and thus that the registration of the disputed domain name occurred in bad faith. As a result, the Panel need not make a finding on whether the concept of constructive notice exists under the Policy (most panels have declined this unless in the presence of very special circumstances).

As to bad faith use, by fully incorporating the FACEBOOK Marks with only a minor variation into the disputed domain name and by using the website under such domain name to provide advertisements and links to other commercial websites that offer services and products in direct competition with the Complainant’s products and services, the Respondent is in all likelihood trying to divert traffic intended for the Complainant’s website to its own for the purpose of earning click-through-revenues from Internet users searching for the Complainant’s website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under Paragraph 4(b)(iv) of the Policy. See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, with further references.

Therefore the Respondent has also been using the disputed domain name in bad faith.

As a result, the Complainant has established registration and use in bad faith under Paragraph 4(a)(iii) of the Policy as well.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.

Brigitte Joppich
Sole Panelist

Dated: September 23, 2007

Posted by Marty at 01:20 PM | Permalink | Comments ()

Wired: "Dot-Name Becomes Cybercrime Haven"

"The domain name system has grown bigger than it was ever planned to be, is doing more than it was ever intended to do and does it proudly," Evron said. "But the governance around it has become profit-based, and we have no fallback system to handle criminal organizations and countries that abuse domain names."

Posted by Marty at 09:20 AM | Permalink | Comments ()

Registrant:
Alexander Shkirenko
489 Lindbergh Place NE
Suite 938
Atlanta, Georgia 30324-3357
United States

Registered through: GoDaddy.com, Inc. (http://www.godaddy.com)
Domain Name: DONTTAZEMEBRO.COM
Created on: 18-Sep-07
Expires on: 18-Sep-08
Last Updated on: 18-Sep-07

Posted by Marty at 02:37 PM | Permalink | Comments ()

San Bernadino County Sun:

"County Supervisor Dennis Hansberger has sued to stop a Muscoy man from criticizing him through a Web site using the supervisor's name.

"The public's access to information about Mr. Hansberger is being limited by these sites," Prince said."

Fanning, 37, owns several cyberdomains that use Hansberger's name, such as www.dennishansberger.com. The Web sites contain critical remarks about the 3rd District supervisor, along with links to newspaper stories about him.

Posted by Marty at 09:55 AM | Permalink | Comments ()

BBC article on the .TK country code top level domain (from the island of Tokelau).

As of now, BBC.TK is still available for registration.

More from the Register here.

Posted by Marty at 10:47 AM | Permalink | Comments ()

Wired: "Fraudster Who Impersonated a Lawyer to Steal Domain Names Pleads Guilty to Wire Fraud"

"A Nevada man pleaded guilty Thursday to his plotting to steal URLs from their legitimate owners by impersonating a California intellectual property lawyer and send threatening letters to domain name owners in hopes of convincing them to turn over the domains to him.

Las Vegas resident David Scali registered the email address trademarkinfringement@netzero.net in 2006 and then, pretending to be a real Califonia lawyer (whose intials are K.Y.C.), threatened domain name owners with $100,000 trademark infringement suits, unless they transferred the domains within 48 hours."

Practice pointer: Very often a domain name registrant will justify a refusal to acknowledge a demand letter by pointing out (correctly) that there is (some amount of) fraud regarding domain names. When sending a demand letter, do not rely on email alone, and provide verifiable contact info. If acting on behalf of a client, when communicating with the registrant by email, visibly cc the client by email (with the client's permission, after discussing with the client the pros and cons of so doing).

Posted by Marty at 12:23 PM | Permalink | Comments ()

Practica eCommerce: "Transferring a Domain Name: Process Varies Depending On the Registrars"

Posted by Marty at 10:11 AM | Permalink | Comments ()

This Is South Devon.co.uk: "Paignton-based International Seed Suppliers Suttons Have Won A Battle"

Posted by Marty at 10:04 AM | Permalink | Comments ()

We have reported previously on what I would refer to as the mess regarding the use of politician's names in domain names. A bad actor can benefit by aprropriating a politician's name, either by diverting traffic through initial interest confusion, or by simply foreclosing the targeted politician from obtaining desirable names. However a politician tends not to have the rights and remedies accorded to a trademark, and thus cannot use the UDRP and ACPA (with exceptions). Complicating the analysis is the First Amendment issue relating to the use of, for example, JANEDOE.COM to provide critical speech about JANE DOE. Alas, the public doesn't benefit from the status quo (such as the behavior illustrated here).

What is to be done?

Posted by Marty at 11:34 AM | Permalink | Comments ()

Out-law.com: "Businessman loses battle for gripe site domain name.":

"The figure behind controversial business schemes has failed in his bid to gain control of the .com internet address consisting of his name. A site that criticises his activities has been allowed to keep the name."

The post doesn't specify but I assume that the domain name in question is stephencleeve.com.

Posted by Marty at 11:27 AM | Permalink | Comments ()

This CircleID post on a TRO entered against Dauben dba Texas International Property Associates, the registrant of the name MYLENNAR.COM, obtained by Lennar, spawned interesting comments. Registrant put up what seems to be a typical HitFarm page o'links. What is not fully explored in the article or thread is why would plaintiff go for a TRO, as opposed to, for example, a UDRP.

Posted by Marty at 03:56 PM | Permalink | Comments ()

From its website:

Purpose

The Coalition Against Domain Name Abuse (CADNA) is a registered 501(c)(6) non-profit organization. Its objective is to facilitate dialogue, affect change, and spur action on the part of policymakers to address the gaps in both the law and ICANN policies that enable massive domain name abuse and consumer frauds. In doing so, CADNA seeks to decrease occurrences of cybersquatting in all of its forms by requesting anti-cybersquatting legislation updates and ICANN policy reforms. With pro-abuse groups already organized in Washington and the recent election of new leadership in both houses of Congress, the time to act is now.

Approach

CADNA will work to educate the public, lobby the relevant agencies of jurisdiction in the United States government, and actively communicate with members of Congress. Through these activities CADNA aims to effectively exert pressure on ICANN, propose draft legislation to increase the statutory damages set forth in the Anti-Cybersquatting Consumer Protection Act (ACPA) to take decisive action on abuses by domain name registrars and registrants, and work with the World Intellectual Property Organization (WIPO) to introduce an international anti-cybersquatting treaty."

Posted by Marty at 11:08 AM | Permalink | Comments ()

Domain Name Wire: "Top Domain Name News Stories of July 2007"

Posted by Marty at 10:46 AM | Permalink | Comments ()

CircleID: "EU NameSpace is Dead?"

Posted by Marty at 03:10 PM | Permalink | Comments ()

While reading Steve Gillmor's column on the Gesturesphere and domain names (dprviically the bit about how he coined a term during a speech, and someone in the audience registered that term as a domain name on the spot), I was reminded of Chief White Halfoat.

Posted by Marty at 11:03 AM | Permalink | Comments ()

Prof Goldman: "Google Sued in Domainer Lawsuit -- Vulcan Golf v. Google:

"Domainer litigation is heating up, and this lawsuit may be the most ambitious anti-domainer lawsuit to date. First, it is a putative class action lawsuit. Second, in addition to naming four leading domainer firms, the plaintiffs provocatively go after Google for providing ads to domainer sites. I believe this is the first lawsuit against Google for its domainer relationships.

The complaint itself is a 121 page, 638 paragraph (with one paragraph enumerating 47 defined terms), 4.3MB behemoth alleging trademark infringement and dilution, ACPA violations, RICO and other claims."

Posted by Marty at 02:03 PM | Permalink | Comments ()

AllAfrica.com: South Africa Domain Name Rules 'Are Working.'

Posted by Marty at 09:02 AM | Permalink | Comments ()

Prof Goldman: "Domain Names Can't Be Trespassed -- Utube.com v. YouTube"

Posted by Marty at 03:59 PM | Permalink | Comments ()

Domain Name Wire: "GoDaddy to Take Over RegisterFly's Domains" (As a result of ICANN's de-accreditation of registrar RegisterFly, 850k names have been transferred to GoDaddy, which already has 20 million names).

Posted by Marty at 08:55 AM | Permalink | Comments ()

From a UDRP decision in which the L.A. Angels failed to obtain ANGELS.COM:

"Complainant denies that Respondent has any rights or legitimate interest in the disputed domain name. In its Complaint, it denies that Respondent owns any legitimate trademark rights in any ANGELS mark.

Respondent relies on the generic nature of the word “Angels,” what would give him a right to register the corresponding domain name. The Panel believes that by this bare allegation alone any respondent could develop a right or legitimate interest in a disputed domain name where as here, a complainant has trademark rights in a mark consisting of a generic word. Because this argument leads to an absurd conclusion, it should be dismissed. Nor is more useful to Respondent his suggestion that he registered the domain name because he calls his daughter “Daddy’s Angel,” since he does not provide any evidence of such fact. In this respect the Panel observes that the domain name in dispute is , and not .

Respondent’s reliance on his service mark registration for the ANGELS mark in Korea, whose certificate is shown at Annex 1 to the Response, deserves more attention. This registration covers services provided by day care centers or nursing homes of class 43. According to the Korean-speaking member of this Panel, the mark registered with Korea’s PTO is “엔젤스 ANGELS.” The text before the word “ANGELS” consists of Korean characters, the sound of which corresponds exactly to the English word “angels.”

As shown in the registration certificate, Respondent obtained the registration before he received any notice of the dispute. This is important in considering the weight of Respondent’s trademark registration. The Panel is aware that “the general principle that the owner of a domain name identical to a previous trademark or service mark may, when challenged by the trademark owner, establish (retroactively) legitimate use simply by filing a fresh trademark application in a jurisdiction other than those where the Complainant’s trademark is registered, is a dangerous principle.” See ISL Mktg. AG, & the Union des Associations Européennes de Football v. The European Unique Res. Org. 2000 B.V., D2000-0230 (WIPO July 5, 2000). However, differing from LION NATHAN LIMITED v. WALLACE WAUGH, D2000-0030, (WIPO Apr. 3, 2000), and as found in ISL Marketing, here Respondent’s registration of the ANGELS mark in Korea predates any notice of the dispute.

Furthermore, like in ISL Marketing, here Respondent apparently went through the registration process of his ANGELS mark without any opposition from Complainant. This is important, since Complainant, as contended in its Additional Submission and shown with Exhibit H, has two Korean trademark registrations for “Angels.” One of them is for “Angels stylized”, application No. 40-2004-49085, application date October 29, 2004, Registration No. 642913, Registration date December 13, 2005, where the “Angels” word is clearly displayed. The other registration is for “ANGELS and design,” application No. 82-6389, application date June 28, 1982, Registration No. 4000099840000, registration date April 7, 1984. Based on these registrations, Complainant could have opposed Respondent’s trademark application, but apparently chose not to do it.

In absence of contrary evidence, the Panel finds that Respondent’s trademark registration for ANGELS is a valid title under Korean law. See Cyrillus S.A .v. KRP Tekstil, D2001-0551 (WIPO Jul. 5, 2001) (finding that a trademark registration in Turkey was a valid title for the respondent since the trademark application had not been opposed by the complainant, and considering that an administrative panel under the Policy and Rules is not intended to carry out an assessment on the invalidity of a trademark).

The Panel is aware that a respondent might seek the registration of a trademark in a convenient foreign jurisdiction, where the complainant had no trademark registrations, in order to fabricate rights or legitimate interests in a domain name. See Société Vortex contre Association bnabil@cybercable.fr, D2001-0803 (WIPO Aug. 22, 2001). Here, Respondent’s registration was not made in any country of convenience, but in Korea, his own country, and where Complainant had previous trademark registrations that could have been a basis for an opposition. The present case also clearly differs from Madonna. In Ciccone, p/k/a Madonna v. Parisi and "Madonna.com," D2000-0847 (WIPO Oct. 12, 2000), the respondent had the same nationality as the complainant, he was not located in Tunisia (the country where he obtained the trademark registration), and he admitted that he had obtained the trademark registration to protect his interests in the domain name. Further, the panel there considered that Tunisian registrations were issued upon application, without any substantive examination. Under the circumstances, the Panel is not ready to find that Respondent’s trademark registration in Korea was obtained merely to circumvent the application of the Policy.

As there are no elements suggesting that Respondent’s trademark registration is other than genuine, the Panel finds that Respondent, based on his trademark rights in the mark ANGELS in class 43, has rights in the disputed domain name. See Westec Interactive Security, Inc. v. Express Post Ltd. (Westec Div.), D2005-0811 (WIPO Oct. 7, 2005) (finding that the respondent had rights in respect of the domain name because there was nothing suggesting that the respondent’s Russian Federation trademark registration was anything than genuine). In the circumstances, Respondent’s trademark registration is consistent with preparations of a bona fide offering of services of class 43.

In sum, Complainant failed to prove that Respondent lacks rights or legitimate interests in the domain name.

Registration and Use in Bad Faith

Although the Panel’s finding under the second element makes a finding on bad faith unnecessary, the Panel believes that Complainant also failed in proving that Respondent registered the disputed domain name in bad faith. In order to make such a determination, a panel must be satisfied that the respondent was or must have been aware of the complainant’s mark, trade name or existence at the time of registering the domain name. In the present case, the Panel does not believe that Complainant succeeds in proving that Respondent knew Complainant’s ANGELS marks or trade name, or was otherwise aware of Complainant before acquiring the domain name at issue. Although Complainant asserts that it has profusely marketed and publicized its ANGELS marks and services in Korea, it does not provide the Panel with evidence leading us to conclude that a Korean citizen like Respondent should be found to know Complainant more likely than not. Further, the Panel does not believe that the theory of constructive knowledge may be applicable to a foreign country, as Korea is in respect of the U.S.A.

Independently from the fact that Complainant’s ANGELS mark is valid, it is also a generic term, in principle apt to support the assertions of Respondent, that he chose it because of its generic nature and because it can be used to refer to small children, such as those who would be taken care of in his planned day care center. The Panel believes that Complainant failed to show that its mark ANGELS is famous in Korea, or that it has acquired secondary meaning in such country, i.e. that the Korean public mainly perceives the word “Angels” as a trademark protecting an American baseball club or its services, rather than as a common noun referring to the messengers of God, or figuratively to small children. See Btex Ltd. v. Noble, FA 102464 (Nat. Arb. Forum Jan. 11, 2002) (finding that the complainant failed to show that the relevant public perceives the phrase “streetmap” as a trademark rather than as a mere description of the goods or services).

Further, it is not contested that Complainant’s agents first contacted Respondent in search of an offer to transfer the domain name for a price, and that Respondent did not know that they were Complainant’s agents. This fact does not support Complainant’s suggestion that Respondent registered the domain name with the primary purpose of selling it to Complainant. See FilmNet Inc. v Onetz, FA 96196 (Nat. Arb. Forum Feb. 12, 2001) (finding that the fact that it was the complainant and not the respondent who had initiated contact, inquiring about purchasing the domain name, tended to weigh against a finding of bad faith).

In sum, Complainant fails to prove that the disputed domain name was registered in bad faith. This finding makes unnecessary for the Panel to examine Respondent’s agreement with Sedo’s domain name “parking” services, and the resulting advertisements posted on the website at the domain name in dispute."

Posted by Marty at 07:27 PM | Permalink | Comments ()

Lipton, Jacqueline D., "Who Owns 'Hillary.Com'? Political Speech and the First Amendment in Cyberspace" . Boston College Law Review, Spring 2008 Available at SSRN

Abstract:
In the lead-up to the next presidential election, it will be important for candidates both to maintain an online presence and to exercise control over bad faith uses of domain names and web content related to their campaigns. What are the legal implications for the domain name system? Although, for example, Senator Hillary Clinton now owns 'hillaryclinton.com', the more generic 'hillary.com' is registered to a software firm, Hillary Software, Inc. What about 'hillary2008.com'? It is registered to someone outside the Clinton campaign and is not currently in active use. This article examines the large gaps and inconsistencies in current domain name law and policy as to domain name use in the political context. Current domain name policy is focused on protecting trademark uses of domain names against bad faith commercial 'cybersquatters'. It does not deal with protecting important uses of domain names as part of the political process. This article identifies the current problems with Internet domain name policy in the political context and makes recommendations for developing clearer guidelines for uses of political domain names. In so doing, it creates a new categorization system for different problems confronting the political process in cyberspace, including: (a) socially and economically wasteful political 'cybersquatting'; (b) politicial 'cyberfraud' which might involve conduct such as registering a politician's name as a domain name to promulgate a misleading message about the politician; and, (c) competition between politicians' names and competing trademark interests.

Posted by Marty at 03:46 PM | Permalink | Comments ()

Corbis Corporation v. CORBIS Internet-MY c/o John Pickworth, WIPO Decision D2006-1631 (Corbis fails to establish reputation of CORBIS mark in UKL prior to 1999 registration date of Corbis.net).

Posted by Marty at 01:38 PM | Permalink | Comments ()

Information Week: "VeriSign Domain Price Increase Criticized" (Argument that domain name registants subsidize the practice of domain tasting - in which speculators hold domain for five days to determining whether it brings in sufficient traffic).

Posted by Marty at 01:00 PM | Permalink | Comments ()

The Register: 'In the Wake Of Registerfly, Is ICANN Taking Flight?" (Attempting to causally link ICANN's recent contemplation of a change in legal status, to its recent dis-accreditation (decreditation? removal of accreditation?) of registrar RegisterFly.)

Posted by Marty at 10:58 AM | Permalink | Comments ()

Tennessean.com: "Keith Urban countersues Keith Urban"

Posted by Marty at 10:53 AM | Permalink | Comments ()

InternetNews.com: "Domain Name Fee Increase Set" (Verisign can raise $6 registry fee to $6.42 in October).

Posted by Marty at 10:34 AM | Permalink | Comments ()

CyberLaw Central: "General Media v. Crazy Troll: Not Reverse Domain Name Hijacking To Bring ACPA Case for Expired Domain"

Posted by Marty at 05:18 PM | Permalink | Comments ()

Text of Microsoft press release on cybersquatting initiatives:

LONDON, and REDMOND, Wash. — March 14, 2007 — Microsoft Corp. today announced new legal actions against cybersquatters in the United Kingdom and the United States, which include expansion of a lawsuit filed in Seattle in August and the filing of a new federal lawsuit against the U.S. company Maltuzi LLC for trademark infringement. In addition to these new actions, Microsoft revealed it has settled a domain infringement settlement with the Dyslexic Domain Company Limited from the United Kingdom and two U.S. civil lawsuits filed against defendants in Salt Lake City and Los Angeles.

Cybersquatters register Internet domain names (such as winowslivemessenger.com and www.micr0soft.co.uk) containing not only widely recognized trademarked names and brands but also misspelled variations of them, which often result in tricking unsuspecting computer users and illegally profiting from them through online ad networks. Screens filled with pay-per-click advertisements greet visitors to these Web sites, which can generate revenue for the registered domain owner and the online ad network. Microsoft has reclaimed more than 1,100 infringing domain names worldwide in the past six months with the help of Microsoft researchers led by Yi-Min Wang, who has played a major role in the company’s efforts to combat cybersquatting.

“These sites confuse visitors who are trying to reach genuine company Web sites, which can negatively affect corporate brands and reputations as well as impair the end-users’ experience online,” said Aaron Kornblum, senior attorney with Microsoft. “With every ad hyperlink clicked, a registrant or ad network harvests cash at the trademark owner’s expense, while derailing legitimate efforts by computer users who are trying to go to a specific Web site.”

Microsoft is also investigating potential violations of intellectual property law in other nations. “We hope that our stance and activity on this issue will help motivate and empower other companies whose brands are abused to take action,” Kornblum said.

U.S.: New and Amended Actions

Microsoft has filed or amended four civil suits in the United States:
•
Microsoft Corp. v. Maltuzi LLC, Case No. C07-1419 (N.D. California). Microsoft alleges that the California company has profited from domain names that infringe on Microsoft® trademarks. Microsoft further alleges that Maltuzi is a large-scale “domain taster” that registers large blocks of domain names, some of which infringe on Microsoft’s intellectual property rights, that it either retains or “drops.”
•
Microsoft Corp. v. Sule Garba, Darin Grabowski and Yi Ning, Case No. 06-1192RSM (W.D. Wash.). Microsoft has amended a civil lawsuit filed in August 2006 in federal district court in Seattle against the owners of 217 infringing domain names who masked their true registration information behind privacy protection shields. In the lawsuit, Microsoft originally named John Doe defendants 1–217 (a legal technique that permits further investigation to uncover actual identities), and has now successfully identified the owners of all 217 domains. Today, Microsoft is amending that complaint to name three defendants who collectively are alleged to have owned at least 135 infringing domain names.
•
Microsoft Corp. v. John Does 1–54, Case No. 07-2-08568-8 SEA (King County Superior Court, Washington). Microsoft has filed a civil lawsuit in state court in Seattle against John Doe defendants 1–54 to unmask defendants hiding their identities.
•
Microsoft Corp. v. John Does 1–105, Case No. C06-1766JLR (W.D. Washington). In December 2006, Microsoft filed a civil lawsuit in federal district court in Seattle to identify defendants who have allegedly registered infringing domain names and “parked” them by associating them with online ad network monetization services. The case is pending.

New and Settled Actions in the United Kingdom

Microsoft has conducted five new legal actions in the U.K. against companies allegedly having registered domain names infringing on Microsoft’s trademark and other statutory and common-law rights. In addition to these actions, Microsoft reached a settlement with U.K.-based Dyslexic Domain Company Limited, which Microsoft alleged had registered more than 6,000 domains. In addition to a monetary payment to Microsoft, Dyslexic Domain Company Limited agreed to other confidential settlement terms.

U.S.: Civil Lawsuits in Utah and California

Microsoft has also settled two federal civil lawsuits filed in August 2006 against five named defendants who allegedly profited from domain names that infringed on Microsoft trademarks:
•
Microsoft Corp. v. Cox et al: Case No. 2:06cv00692 TS. Microsoft filed this case in Salt Lake City, alleging that the defendants and their businesses had registered 324 domain names targeting Microsoft. The settlement ends the litigation with a stipulated order for permanent injunction against all defendants, a $2 million judgment as to defendants Jason Cox of New Mexico and Newtonarch LLC, the Utah-based business of the remaining individual defendants, and other confidential terms.
•
Microsoft Corp. v. Brown: Case No. cv06-5247R. Microsoft filed this case in Los Angeles, alleging that the defendant had registered 85 domain names targeting Microsoft. The settlement ends the litigation with a stipulated order for permanent injunction and a $1 million judgment as to defendant Dan Brown of California dba Partner IV Holdings, and other confidential terms."

Posted by Marty at 10:17 AM | Permalink | Comments ()

Biz.Yahoo.com: "Network Solutions Annonces Ownership Change" (General Atlantic Partners purchase NetSol from Pivotal Private Equity).

Posted by Marty at 06:56 PM | Permalink | Comments ()

MercuryNews.com: "Sex.com hijacker pleads poverty after fleeing to Mexico":

"A man who siphoned millions of dollars from a pornography Web site and fled to Mexico cried poor Monday and asked a judge to erase the $65 million he owes the rightful owner of Sex.com.

Stephen Michael Cohen was released from prison in December so he could surrender assets to Gary Kremen, the online entrepreneur who registered the domain name in 1994. But Cohen told U.S. District Court Judge James Ware that he's jobless and broke."

Posted by Marty at 10:02 AM | Permalink | Comments ()

David Pecker is the chairman of American Media, Inc., publisher of, among others, National Enquirer and Weekly World News. 'Mr. Ferris' registered the domain name DAVIDPECKER.COM, had a PPC company host it, where it was keyed to ads for porn, because, according to the registrant, the word PECKER was in the domain name. Mr. Pecker brought a UDRP.

Although 'Mr. Ferris' (as he is identified in the decision) did not seem (to me) that he could establish a bona fide intent to use the name in conenction with an offering of goods or services, and altohugh there seemed to be plausible evidence of bad faith, the UDRP was denied. Complainant could not establish rights in his name as a trademark:

" A number of disputes under the Policy have involved personal names, as here, and the panels’ decisions have been mixed on the issue of whether the complainants have rights in the names. See, e.g., Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560 (finding common law rights in “Tom Cruise”); and The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net, and God.info, WIPO Case No. D2002-0184 (finding no rights in “Jerry Falwell”).

Indeed, the issue of rights in personal names has generated enough cases and raised enough questions that the matter has been addressed by the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, which states: “While the UDRP does not specifically protect personal names, in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 1.6, “http://arbiter.wipo.int/domains/search/overview/index.html” (visited January 15, 2007).

. . .

In this case, Complainant has provided no evidence of his rights in the Disputed Domain Name other than broad assertions that he “is known nationally and internationally by the name David Pecker and his high profile name is linked inextricably with AMI and is cited frequently by the media”, and an affidavit from AMI’s assistant general counsel that Complainant “possesses a strong common law service mark in his name by virtue of his position as being one of the leaders in the publishing industry… David Pecker’s personal fame and reputation have caused his name, as a leader in the publishing industry and as Chairman and CEO of AMI, to acquire a secondary meaning in the industry. Complainant’s name is used to promote AMI and the public understands his name as referring to AMI”. While these statements may well be true, it is nevertheless incumbent on a complainant, except in the most obvious cases, to provide evidence in support of a claim to rights in a personal name for the purposes of the Policy. . . . It is also unclear to the Panel on the evidence provided whether, as required by the Policy in such cases, Mr. Pecker “has ever used his personal name for the purpose of advertising or promoting his business or for the sale of any goods or services”. Joacim Bruus-Jensen v. John Adamsen, WIPO Case No. D2004-0458.

. . .

In light of the above, the Panel is not convinced, based on the limited record before it, that Complainant has established rights in the name “David Pecker” for the purpose of this proceeding. Therefore, the Panel finds that Complainant has not succeeded in proving the first element of the Policy.

[HOWEVER]

Complainant’s lack of success in this proceeding in proving its rights in the name “David Pecker” does not necessarily mean that Complainant has no remedy. “He may have claims under the Anticybersquatting Consumer Protection Act (‘ACPA’), which expressly provides for protection of personal names, or perhaps his actions lie in tort. Complainant is free to pursue his claims in U.S. courts.” The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net, and God.info, WIPO Case No. D2002-0184.

Note: Complainant has indicated he is considering an ACPA proceeding.

Comment: Entertainers usually fare better in UDRPs than well-known executives, as it tends to be easer for them to show, in the absence of a registration, that their names function as common law trademarks for the entertainment services they provide. That should be some comfort for PETER O'TOOLE.

Posted by Marty at 12:51 PM | Permalink | Comments ()

Domain Fest: Exhibition and Conference for Domainers. Registrars, re-sellers and PPC companies among sponsors and presenters.

Posted by Marty at 01:49 PM | Permalink | Comments ()

CircleID: "Google's Top 10 Search Terms Dominated By Trademarks": "The moral of the story is that consumers are generally searching specifically, rather than generically. While generic search terms remain important to website owners who are concerned with search engine ranking and increasing their traffic, the vast majority of the top search terms are unquestionably trademarks."

Posted by Marty at 01:21 PM | Permalink | Comments ()

Further to the de-registration of a domain name by registrar, GoDaddy, the former registrant has now put up NoDaddy.com.

Posted by Marty at 10:30 AM | Permalink | Comments ()

Registrars reserve powerful rights to de-register domain names belonging to registrants who have violated the terms of service agreement. They tend not to, in the absence of a court order. It turns out that GoDaddy does, here in the case of a website that was making available lists of MySpace usernames and passwords.

One domain name industry site is calling this a PR nightmare for GoDaddy. GoDaddy might, however, be able to pick up some business from the people who had their usernames and passwords published.

GoDaddy's CEO maintains a blog, and we hope he comments on this.

Posted by Marty at 10:47 AM | Permalink | Comments ()

Sunday Times of London: "Homeless in Cyberspace" (in which the author forgets to renew her domain name, and a speculator offers to sell it back to her for $888).

Posted by Marty at 09:00 AM | Permalink | Comments ()

IHT: "MGM seeks control of Wargames.com site name." MGM is apparently planning a sequel to the film 'Wargames." The domain name registrant has put up a war games-related site since receiving the demand letter, which of itself will not be all that probative. This registrant also has been in the news in 2005 when he won the papal name domain name sweepstakes.

Posted by Marty at 07:35 AM | Permalink | Comments ()

Registrant:

Christopher Little Literary Agency
10 Eel Brook Studios
125 Moore Park Rd
London
SW6 4PS
UK

Domain name: DEATHLYHALLOWS.COM

Created on: 2006-12-21
Expires on: 2008-12-21

Christopher Little is JK Rowlings' agent. It was announced today that Harry Potter and the Deathly Hallows will be the name of the seventh book.

Posted by Marty at 03:31 PM | Permalink | Comments ()

Intending to go to Netflix, I typed in Netflox.

Posted by Marty at 12:15 AM | Permalink | Comments ()

Domain Name Wire: "Marchex May Have $24M In Trademark Domains" (Marchex being the owner of one of the larger domain name portfolios):

"David Kesmodel’s expose on domain company Marchex (NASD: MCHX) continues to dig up dirt. After discovering that the company was monetizing a number of trademark typos through its parking program, Kesmodel has now uncovered a number of potentially trademark-infringing domains that the company actually owns. These include ibmlaptops.com, ibestbuy.com, chasemortgagega.com, cheapdisneytickets.com and carnivalsinglescruises.com."

With regard to CHEAPDISNEYTICKETS.COM, I note in passing that there was a UDRP proceeding, Six Continents Hotels, Inc. v. Larry Goodwyn, in which CHEAP-HOLIDAY-INN-HOTELS-ACCOMODATIONS.COM was found to fairly describe a third party's use of the HOLIDAY INN mark, but see Disney Enterprise v. McSherry dba Florida Vacation Homes (DISNEYVACATIONVILLAS.COM registered in bad faith as defendant competed with Disney).

Posted by Marty at 11:26 AM | Permalink | Comments ()

Cybersquatters risk punitive damages of $100,000 per name to divert traffic through use of a confusingly similar domain name. Universal Tube of Pennsylvania, which sells machines for making metal tubes, owns the domain name UTUBE.COM. It received 65 million hits in August, most of them, no doubt, intended for YouTube. And is it happy? No.

Universal Tube is now suing YouTube for the costs it is incurring getting slammed by all that traffic. Apparently very few people looking for LonelyGirl videos can be converted into customers for tube-making machinery.

Posted by Marty at 08:59 AM | Permalink | Comments ()

Not surprised that someone registered the domain name GOOTUBE.COM.

Posted by Marty at 05:47 PM | Permalink | Comments ()

Universal Tube owns the site utube.com, and has had a recent increase in traffic.

Posted by Marty at 11:02 PM | Permalink | Comments ()

Daytona Beach News Journal: 'Domain Woes Pain In The Head' (mediation over registration of MYFLORIDA411.com).

Posted by Marty at 10:38 AM | Permalink | Comments ()

ZDNet.co.uk: 'Spamhaus domain name may be suspended"

Posted by Marty at 11:20 AM | Permalink | Comments ()

Registration of DotMobi domain names to the general public begins today. See your friendly neighborhood registrar.

Posted by Marty at 11:46 AM | Permalink | Comments ()

IcannWatch: "ICANN Confirms: New gTLD Contracts Permit .tv style pricing."

Posted by Marty at 02:53 PM | Permalink | Comments ()

SlashDot: "GoDaddy Caves To Irish Legal Threat."

Posted by Marty at 05:09 PM | Permalink | Comments ()

Via Chang Tsi, Anna Sui obtains annasui.cn using .CN arbitration process.

Posted by Marty at 09:18 AM | Permalink | Comments ()

Salt Lake Tribune: "Schools Domain Taken By Porn" The article leaves you to guess the domain name in question.

Posted by Marty at 01:51 PM | Permalink | Comments ()

43(b)log: "Typosquatting isn't false advertising" (discussion of Lands' End v. Remy (W.D. Wis).

Posted by Marty at 09:54 AM | Permalink | Comments ()

An entity claiming rights in the trademark SEX.EU fails to dislodge the registrant of the domain name SEX.EU, who somehow showed prior rights in SEX. Via The Register.

Posted by Marty at 01:30 PM | Permalink | Comments ()

There's something of a holy grail regarding developing a good format for delivering news to the mobile user - for example, the commuter who may wish to read the morning headlines on his/her Treo.

One format is the 'river of news' that provides a feed of headlines that flows along the screen like a, uh, river.

Dave Winer, who's been instrumental in the development of blogging, RSS and podcasting, has been demonstrating a 'river of news' feed at NYTIMESRIVER.COM and BBCRIVER.COM. The demonstration is getting a lot of attention and was featured on Rocketboom yesterday.

Without commenting on Mr. Winer's use of those names for his demonstration, I wonder if people might get it into their heads that registering a domain name in the form [media brand name]RIVER.COM might be a good idea.

It might therefore be worth the $7 were you to register your RSS name plus RIVER and -RIVER today.

Further discussion by ZD Net's new hire, Denise Howell, here.

Posted by Marty at 10:58 AM | Permalink | Comments ()

Wired: EU Domain Dream in Disarray

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www.yputube.com

Posted by Marty at 09:41 AM | Permalink | Comments ()

Silicon.com: Dot-eu 'warehousing' scandal strikes US registrars.'

EURid press release here.

Prior Trademark Blog coverage of allegations of irregularities concerning the .EU roll-out here.

Posted by Marty at 11:17 AM | Permalink | Comments ()

News.com: "DNS service promises safer, faster browsing" (domain name look-up service intended to combat phishing and typo sites).

Posted by Marty at 10:13 AM | Permalink | Comments ()

We don't have all the facts, but based on this Honolulu Advertiser article, it sounds like an ACPA threat was used to stop political speech.

Posted by Marty at 09:07 AM | Permalink | Comments ()

Pacific Epoch: Yahoo lost an appeal to obtain the names YAHU.COM and YAHU.COM.CN in China. The article states that the current registrant's name has the same pinyin, or phonetic rendering in roman characters, but uses different Chinese characters.

Posted by Marty at 08:43 AM | Permalink | Comments ()

Discussion of ICANN's (inadequare) regulation of the Whois database by Doug Isenberg.

Posted by Marty at 11:07 AM | Permalink | Comments ()

You've got to acknowledge that the Jolie Pitts have proactive IP representation. They were particularly vigilant in obtaining the most obvious domain names incorporating the name of their newborn. This foresight has forced sites such as this, to offer such not-so surefire traffic generating names as CHILDRENOFJOLIEPITT.COM. (drill down to 'fame capitalization.'

Posted by Marty at 11:03 AM | Permalink | Comments ()

Out-Law.com: "Law Firm Accused Of Cybersquatting"

The law firm of Scott and Scott uses the domain name SIIADEFENSE.COM to advertise its services of defending those accused of software piracy by the SIIA, the Software and Information Industry Association, a trade assocaition that polices software piracy.

Scott and Scott apparently also use BSADEFENSE.COM, the Business Software Alliance being another anti-piracy association that sues on behalf of software publishers.

Posted by Marty at 03:00 PM | Permalink | Comments ()

Respondent in UDRP alleges that it is a cat, which is not an affirmative defense, and possibly casts doubt on the rest of the allegations.

Must read opinion for that dry British wit:

Morgan Stanley v. Meow, NAF 671304 (May 22, 2006).

Practice pointer: If you are cat, use one of those domain name proxy services.

Posted by Marty at 10:10 AM | Permalink | Comments ()

The new .MOBI top level domain name is going live. There is a sunrise period this week until the 29th for entities that can establish that they are part of the 'mobile industry' (established by membership in one of several mobile industry organizations).

A second sunrise begins June 12 for holders of trademark registrations (any industry) that were granted prior to July 2005.

Then, on August 28, it's every registrant for themselves.

.MOBI Sunrise FAQs here.

List of eligible mobile industry organizations:

AMTA, CTIA, CWTA,GSMA, MEF, MMA, NZ Wireless Forum and the RCA.

Posted by Marty at 09:03 PM | Permalink | Comments ()

Discussion here.

Text:

The language of S2306 follows:

Introduced by Sens. LITTLE, ALESI, BRUNO, DeFRANCISCO, FARLEY, FUSCHIL-LO, HANNON, LARKIN, LEIBELL, LIBOUS, MALTESE, MARCELLINO, MARCHI, MAZIARZ, MEIER, MORAHAN, PADAVAN, RATH, SALAND, SKELOS, VOLKER, WINNER - read twice and ordered printed, and when printed to be committed to the Committee on Consumer Protection

AN ACT to amend the general business law, in relation to cyber piracy protections and the unlawful registration of domain names

The People of the State of New York, represented in Senate and Assembly, do enact as follows:

1 Section 1. The general business law is amended by adding a new article
2 9-C to read as follows:

3 ARTICLE 9-C
4 CYBER PIRACY PROTECTIONS; DOMAIN NAMES
5 Section 146. Short title.
6 147. Definitions.
7 148. Unlawful registration of domain name.
8 149. Civil remedies.
9 Section 146. Short title. This article shall be known and may be cited as
10 the "domain names cyber piracy protections act."
11 Section 147. Definitions. For the purposes of this article, the following
12 terms shall have the following meanings:
13 1. "Domain name" means any alphanumeric designation that is registered
14 with or assigned by any domain name registrar, domain name registry, or
15 other domain name registration authority as part of an electronic
16 address on the internet.
17 2. "Internet" means the international computer network of both federal
18 and non-federal interoperable packet switched data networks.
19 3. "Traffic in" refers to transactions that include, but are not
20 limited to, sales, purchases, loans, pledges, licenses, exchanges of

1 currency, or any other transfer for consideration or receipt in exchange
2 for consideration.
3 Section 148. Unlawful registration of domain name. 1. No person shall regis-
4 ter a domain name that consists of the name of another living person, or
5 a name substantially and confusingly similar thereto, without that
6 person's consent, with the specific intent to profit from such name by
7 selling the domain name for financial gain to that person or any third
8 party.
9 2. A person who in good faith registers a domain name consisting of
10 the name of another living person, or a name substantially and confus-
11 ingly similar thereto, shall not be liable under this section if such
12 name is used in, affiliated with, or related to a work of authorship
13 protected under title 17 USC, including a work made for hire as defined
14 in 17 USC 101, and if the person registering the domain name is the
15 copyright owner or licensee of the work, the person intends to sell the
16 domain name in conjunction with the lawful exploitation of the work, and
17 such registration in not prohibited by a contract between the registrant
18 and the named person.
19 Section 149. Civil remedies. 1. Upon the commission of a violation of this
20 article, an application may be made by the public service commission to
21 a court having jurisdiction to issue an injunction against the regist-
22 rar, domain name registry, or other domain name registration authority,
23 and upon notice to the respondent of not less than five days, the court
24 may award injunctive relief, including the forfeiture or cancellation of
25 the domain name. If it shall appear to the satisfaction of the court
26 that the respondent has committed a violation of this article, the court
27 shall enjoin and restrain any further violation without requiring proof
28 that any person has, in fact, been injured or damaged thereby.
29 2. In addition to injunctive relief, the court may fine the registrar,
30 domain name registry, or other domain name registration authority, one
31 thousand dollars for each day the violation occurs. The court may also
32 order the transfer of the domain name as part of the relief awarded.
33 3. In a civil action commenced under this section, a domain name shall
34 be deemed to have its situs within the state if the domain name regist-
35 rar, registry, or other domain name authority that registered or
36 assigned the domain name is located within the state.
37 Section 2. This act shall take effect on the one hundred twentieth day after
38 it shall have become a law; provided, however, that any rules and regu-
39 lations necessary for the implementation of this act may be promulgated
40 on or before its effective date.

Posted by Marty at 01:01 PM | Permalink | Comments ()

eWeek: Freedom of Information Act requests reveal emails suggesting that U.S. Government Officials such as Rove and religious conservative lobbyisys were active in the defeat of the .XXX top level domain name. The article suggests that such activities may have violated the USG's Memorandum of Understanding with ICANN.

ICANN WATCH and (ICANN board member) Susan Crawford have been following this story and I await their comments.

A non-Trademark law observation occurs. This is a common problem in regulation. There is an activity that, for these purposes, we will label as a vice. Speaking broadly, the 'left' proposes harm-reduction procedures (clean needles, condoms, regulations) and the 'right' opposes any measure short of zero tolerance, because, in part, harm-reduction impliedly endorses the vice. Some times the left wins and a 'better than nothing' alternative is implemented. In this case, 'nothing' is implemented.

Thoughts?

Posted by Marty at 09:40 AM | Permalink | Comments ()

IcannWatch.

Reuters.

ICANN Board member Susan Crawford.

Posted by Marty at 02:53 PM | Permalink | Comments ()

The Gowlings firm has created a portal for various domain name news and tools, including a summary of all dot-ca arbitrations.

Posted by Marty at 09:44 AM | Permalink | Comments ()

Icann has rejected .XXX as a new top level domain. Possible titles for this post include:

.XXX Gets X'ed Out
No Sex Please, We're ICANN
.XXX To Be Ex-TLD
No Happy Ending For .XXX

As I have mentioned previously, I think that .XXX was plausible as a harm-reduction approach It was misunderstood as both a fix for and an endorsement of pornography, when it was neither.

I predict that there will be regulated zones on the Internet some day, and that domain names could be part of that process. All other things being equal, the rejection of .XXX will deprive us of data as to how zones might function.

Posted by Marty at 01:55 PM | Permalink | Comments ()

CircleID discussion of the practice of domain name speculators taking advantage of the 5 day trial period to test out domain names, to determine whether they have sufficient 'type-in' traffic to make them worthy of being yet another parked-domain displaying keyword ads.

Posted by Marty at 11:32 AM | Permalink | Comments ()

Washington Post: The Web's Million-Dollar Typos

Posted by Marty at 10:21 AM | Permalink | Comments ()

That was fast. As far as I can tell, an entity received a quick registration for PST in the Benelux. While another entity with an older PST registration is moving to cancel this Benelux registration, as far as this .EU dispute goes, a valid registration is a valid registration. I encourage EU practitioners to email me and set us straight.

Posted by Marty at 04:45 PM | Permalink | Comments ()

A sunrise period for registrations in the new .MOBI top level domain approaches, details via the Encirca registrar here.

For what it's worth, mobi.com, dotmobi.com and dotmobi.info seem to be taken by domain name speculators.

Posted by Marty at 09:35 AM | Permalink | Comments ()

Slashdot: 'Domain Names Worth Their Weight in Gold Again."

Posted by Marty at 11:27 PM | Permalink | Comments ()

UPDATE Monday: Enom emailed me to advise that only a 'several' registrars provided Enom contact data. I went to the list again just now and counted 50 registrars with an Enom number. Enom adds that an entity from New York is responsible for 396 accreditations.

ORIGINAL POST: Open registration for the .EU top level domain name begins on April 7. Accredited registrars were listed here. Approximately 400 registrars give Bellevue Washington (Note Update Above) as their location and provide their telephone number as that of eNom, a registrar in Bellevue. Eyebrows were raised because at 10,000 euros per accreditation, those are hefty fees.

One registrar has circulated a memo (that does not identify eNom) that states:

". . . our preliminary investigation indicates that this may be an attempt to register valuable brands, generic names and then profit by reselling them back to clients at a high premium or monetize the high traffic names for pay per click revenue."

Another registrar, Nick Wood of Com Laude said, "This alliance is not doing anything wrong in rushing for attractive names as long as they have genuine end-clients. [However] there is a provision in the agreement that all accredited registrars sign with EURid, the registry operator, that specifically forbids warehousing but does EURid have the appetite to enforce it?"

At first glance, one wonders if the 4 million euro investment could be re-couped if only retail registration is envisioned.

My emails to eNom asking them to comment on this have not been returned as of yet. (Note Update Above).

Posted by Marty at 02:58 PM | Permalink | Comments ()

Dennis Forbes: 'Interesting Facts About Domain Names.' HT Scripting News.

Posted by Marty at 11:13 AM | Permalink | Comments ()

'Order Now and Start Your AdSense Empire Today, 'says this ad from a company that syndicates content to would-be domain name monetizers.

Posted by Marty at 11:55 AM | Permalink | Comments ()

Barrett, 'Internet Trademark Suits and the Demise of 'Trademark Use,' 39 U.C. Davis L. Rev. 371 (2006). Abstract:

"The Internet has provided countless new ways for ingenious businesses and individuals to refer to a plaintiff's mark in a manner that impacts the plaintiff's business. These new methods may not directly associate the mark with goods or services that the defendant is offering for sale and may be completely hidden from consumers' view. In evaluating the numerous trademark infringement and dilution suits that these unauthorized references have generated, courts have often failed to focus on the appropriate role of the "trademark use" requirement, which has traditionally limited the scope of the trademark infringement (and more recently, trademark dilution) cause of action. Some courts appear to have completely ignored the trademark use limitation, while others have acknowledged the limitation but construed it in a manner that undercuts or distorts it. This has given rise to a number of splits in the Circuit Courts of Appeals. This Article undertakes to bring some focus and coherence to the trademark use issue in the Internet context. It provides an in-depth examination of the history and purpose of the limitation and proposes a modern, general definition of "trademark use" in light of that history and purpose. It then demonstrates how this definition should apply in several important contexts on the Internet."

HT Prof Goldman, who provides other links to law review articles on the same topic.

Posted by Marty at 01:37 PM | Permalink | Comments ()

So I am told.

Posted by Marty at 09:35 PM | Permalink | Comments ()

South Korean Court affirms 2000 UDRP decison awarding HPWEB.COM to HP.

Posted by Marty at 11:43 AM | Permalink | Comments ()

Press Release re settlement re use of ACOMPLIAREPORT.COM between news site and owner of ACOMPLIA trademark. Settlement contains provisions relating to mitigation of confusion.

Posted by Marty at 11:38 AM | Permalink | Comments ()

Someone who believes that Home Depot sucks, prevailed in a UDRP brought by Home Depot. Respondent was represented by the University of San Francisco Internet and Intellectual Property Justice Clinic. Via EFF.

This would be a useful decision to review prior to sending a demand letter to a gripe site, as there is good discussion of the three elements in the context of a gripe site.

I don't believe Home Depot sucks but it seems to matter which location you go to. I have had basically positive experience with the Port Chester one. I stay away from the Yonkers location (not enough sales help) unless I'm also going to Costco and Stew Leonards there. The Danbury, CT Home Depot is good for large items, such as lawn mowers.

Posted by Marty at 10:13 AM | Permalink | Comments ()

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Poorly considered domain names, via WordLab.

Posted by Marty at 10:14 PM | Permalink | Comments ()

NPR Podcast by Xeni Jardin on background issues re ICANN.

Posted by Marty at 11:11 PM | Permalink | Comments ()

Must read primer on the expiring domain names industry: 'How To Snatch An Expiring Domain Name" by Mike Davidson, via Law Tech Guru.

Posted by Marty at 08:59 PM | Permalink | Comments ()