Entries tagged with “udrp” from Domains / Internet Technology News - DNS News

Trademark holders do funny things with domains.

Bebo.ie, which was registered in bad faith, was handed back to its rightful owners last year.

However Bebo Inc obviously don't care enough about the .ie domain to hold onto it, so it's been dropped.

So will anyone try to grab it again?

It will be interesting to see if someone else makes a play for it. With the number of active Irish users on Bebo the domain would probably generate quite a bit of type in traffic.

HarperCollins, the UK based publishing house, has won a WIPO domain dispute.

The dispute centred around the domain: collinsdictionary.com

According to Hosterstats the domain was first registered back in 2005, but has been parked ever since.

The registrant did not respond, so the domain dispute was decided in HarperCollins' favour.

The only odd thing is that the decision is dated almost 2 years ago, yet it was only published today.

HarperCollins, the UK based publishing house, has won a WIPO domain dispute.

The dispute centred around the domain: collinsdictionary.com

According to Hosterstats the domain was first registered back in 2005, but has been parked ever since.

The registrant did not respond, so the domain dispute was decided in HarperCollins' favour.

The only odd thing is that the decision is dated almost 2 years ago, yet it was only published today.

Lead Networks, an Indian based registrar, has been sent a "notice of breach" by ICANN.

The letter goes into details of how the registrar has failed to meet its requirements under the RAA and also its obligations under the UDRP.

Seemingly Lead Networks' registrants have attracted no less than 61 separate UDRP proceedings and their lack of cooperation with WIPO led to a letter from WIPO being sent to ICANN. WIPO's letter goes into some detail about how Lead Networks may have been involved in what has been described as "contributory cybersquatting" ie. helping registrants to act in bad faith towards trademark holders.

According to DotandCo Lead would appear to be the registrar of record for about 130 thousand domains and judging by the IP blocks they're using is probably relying on someone else to handle some of their backend processes.

ICANN's letter does not leave much room for misinterpretation - they're clearly not impressed, but they are granting Lead a 30 day "stay of execution". Whether Lead Networks will be able to show ICANN's compliance team that they are going to "behave" or not at this juncture remains to be seen, but based on the body of evidence cited in both ICANN and WIPO's letters it's doubtful.

On a positive note the wider community should welcome the fact that ICANN is taking action against registrars who do not "play by the rules". Of course not all of the rules may be perfect, but they're the only ones we have at the moment.

Remember the draft IRT report? Well they've published the final version after supposedly taking into consideration comments and feedback.
However you'd be forgiven for thinking that their view on the feedback process was ever so slightly biased.
Basically they seem to have taken on board any comments and feedback that supported their views and either ignored or dismissed any that didn't.

To view all the comments that were left you can go here (they seem to have moved the pages around, so the other links I had to the comments are no longer working)

The comments that were submitted came from a wide variety of sources, but included end users, end user groups, registrars, lawyers and companies interested in launching new gTLDs.

So what is in the final report that is so abhorrent?

Take the issue of whois and privacy, which I mentioned during the comment period:

After carefully consideration, the IRT believes that the provision of WHOIS information at the registry level under the Thick WHOIS model is essential to the cost-effective protection of consumers and intellectual property owners. For this reason, the IRT recommends that ICANN amend the proposed Registry Agreement to include an obligation that all registry operators for new gTLDs must provide registry-level WHOIS under the Thick WHOIS model currently in place in the .info and .biz registries

I love the way they lump "consumers" in with "intellectual property owners", but I digress. There is a footnote that basically brushes off concerns about privacy:

The IRT acknowledges that some comments raised privacy concerns about this recommendation. However, it notes that the thick registry Whois model has been employed in many new gTLDs for many years without any evidence of legal problems, and also that ICANN, on the unanimous recommendation of the GNSO Council, has established a procedure that can be invoked by any registry that believes it faces a conflict between its contractual Whois obligations and requirements of national privacy laws. See http://www.icann.org/en/announcements/announcement-18dec07.htm. To date, this procedure has never been invoked.

They have completely ignored or are ignorant of the very important difference between data collection and display. As I mentioned in my comments on this particular subject:

The IRT recommendation for Thick WHOIS as implemented by the .BIZ and .INFO registries could be put forward for incorporation into the next version of the Guidebook, but the IRT should also recognize that variations may occur depending on local law (Telnic is one example). In other words, the data that is displayed to the public vs. the data that is actually captured is something that needs to be clarified.
As I already stated, I would have huge issues with the display of personally identifiable data without there being safeguards in place. The .tel implementation is very sane and balances individual's rights to privacy with law enforcements requirements

In essence if the IRT has their way private individuals will be left with three options:

1. Not register domains if they value their privacy
2. Provide bogus contact information, while this may breach registry rules it's quite easy to provide plausible information that is not correct
3. Use a proxy service, which would again lead to issues of display (self defeating?)

The IRT's take on WHOIS is incredibly shortsighted and contradictory.

From their report (my emphasis added):

In order to test the efficacy of each proposal and the solution to be developed by the IRT Sub-Groups based upon the proposals prioritized, the IRT also developed the following list of questions to be asked as a benchmarking checklist against which to measure all proposals:
what are the harms that are being addressed by the solution;
will it scale;
does it accommodate territorial variations in trademark rights;
does it conform to extent of actual legal rights;
does it work in light of IDNs;
can it be gamed and abused;
is it the least-burdensome solution;
is it technologically feasible;
how will it affect consumers and competition; and
what are the costs and who pays them.

There is no clear distinction to my knowledge between a "user" and a "consumer", as a "consumer" can also encompass registrants, who, as private individuals have rights.
While a right to privacy may not be guaranteed under US law, it is definitely guaranteed under EU law, so how a namespace for global use, which may be legally constituted within the EU could be compatible with a "thick whois" display is beyond me.
And as I already mentioned, abuse of whois is child's play. So by ignoring registrants' rights to privacy they seem to be doing themselves no favours.

With regard to proxy registration services the IRT does consider them worthy of research, but doesn't actually make any firm statement on them:

However, the IRT did identify one proposal, in particular, that it believes should be further considered to determine whether it has any merit; namely the development of universal standards and practices for proxy domain name registration
services.
Many of those who filed comments to the DAG have asked that ICANN consider the issue of proxy domain name registrations with regard to new gTLDs. The IRT
recognizes that proxy domain name registration services raise complex concerns that require a great deal more analysis and consideration that were outside the limited time frame available. As a result, the IRT takes no position at this time on proxy domain name registrations. The IRT does recommend, however, that ICANN consider this issue and report to the community on whether it should or is able to make any recommendations with regard to the use, standards and practices of proxy registrations.
The timetable of such recommendations may be independent of the timetable for the introduction of new gTLDs, but the IRT strongly recommends that ICANN's consideration of this issue commence as soon as possible.

Considering how much of a policy "football" whois is in ICANN circles it is understandable that the IRT did not wish to get too deeply embroiled, but that they would also insist on their thick whois model is abhorrent.

Other areas that caused issues for people in the draft report have also been more or less ignored. While the original draft report spoke of a specific number of trademark registrations qualifying an IP holder to special protection, they have toned this down in the final document. Unfortunately they still haven't dropped the idea completely, so the "tiered" trademark holder concept is still alive and well in IRTville.

It is obvious to anyone reading this final report that the document was drafted from the perspective of intellectual property rights owners only, and even within that group only the "heavyweights" seem to really matter.

George Kirikos sums up some of the issues very nicely:

The URS in particular is an extremist view of trademark rights, tilted in favour of IP interests compared to the UDRP and beyond what is protected or
recognized by law and due process. It also obfuscates the dual requirement of BOTH bad faith use AND registration (there are lots of inconsistencies in the
language that seek to weaken the standard to make it "OR" instead of "AND").
The level of defaults will be even higher than the UDRP simply because good faith registrants never receive actual notice of complaints. Even faxes were
considered too expensive! A 1 page fax, using email-to-fax technology (so it can easily be automated by the URS provider) would cost less than $1 ANYWHERE
in the world! The IRT team should try sending registered letters in a statistically valid sample size and measure how long it takes them to be
delivered to different parts of the world -- it can be more than a week, even from the USA to Canada, let alone from Europe to Canada

As I mentioned previously, not all WIPO UDRP decisions go as smoothly for trademark holders as they would like. In many cases the trademark holders seem to work under the assumption that their trademark and IP gives them rights that negate those of 3rd parties.

Of course, in common with other ICANN documents, there is now a public comment period open for people to make their feelings heard. You don't need to be a registrar or anything special to make your voice heard.

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One of the more recently reported WIPO UDRP cases that caught my attention was in relation to airfrance-suck.com

The decision, which went against the registrant, makes for some interesting reading.

The salient points being:

• The "suck" suffix can be a legitimate defence
• A lot of "suck" or "sucks" related WIPO cases end up being ruled in favour of the trademark holder
• If you're going to register a "brandnamesucks.com" type domain you need to actually use it

You can read the full decision on the WIPO site

ICANN has been holding a public comment period on the second draft of the new gTLD handbook. This period was due to close yesterday.

Prior to yesterday afternoon there was a healthy number of comments, but in the past 24 hours a significant number of new comments have been submitted.

The tone and content of the comments vary considerably.

While some commentators are not overly enamoured with some of the concepts being pushed around, the general consensus would appear to be in favour of new TLDs.

That being said, the intellectual property contingent have quite a large number of reservations and want various safeguards and concessions to be made in order to make the process more palatable to them.

Ticketmaster have won a WIPO UDRP over a fairly obvious typo of their name:
tiicketmaster.com

The decision isn't that interesting as the case wasn't contested by the registrant and the breach of trademark was so obvious.

You can read about it on the WIPO site here

Just going through the latest WIPO decisions I see there's one regarding christian-dior.es. While there have been other WIPO cases involving .es domains I thought this one was vaguely interesting, as it involved a high profile brand name.

Needless to say Christian Dior won and the registrant did not reply.

Good quality watches are not cheap and the companies that make them have a constant battle against fraudsters of all kinds. People typo squatting their name obviously doesn't help.

Breitling is a very well known brand of watch. They own breitling.com.

Someone else owns bretling.com. Notice the difference? There's only one letter in it and someone typing quickly or who can't spell .....

The WIPO decision goes into the trademarks held by Breitling (plus they've been around since 1884 anyway!) and shows how the other domain met the UDRP test (ie. confusion etc.,)

What is interesting is that the domain holders actually replied, which isn't that common.

You can read the full case here.

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Two letter domains are quite rare (obviously!) so a couple of WIPO cases surrounding them is only to be expected.

The decision is quite interesting, as it shows that trademark holders do not always get their own way.

One of the more recent WIPO decisions caught my eye as it was for the domain ianfleming.com

Ian Fleming was, of course, the creator of James Bond and wrote all 14 novels, as well as Chitty Chitty Bang Bang.

This year happens to mark the centenary of his birth, which may or may not be a coincidence:

The intellectual property rights associated with the name Ian Fleming passed upon his death to the trustees of the Ian Fleming Will Trust, for the benefit of Ian Fleming's family. The trustees of the Will Trust (the first and second Complainants) have all the rights and responsibilities of executors of Ian Fleming's estate. The trustees wholly own and control the third Complainant, which was incorporated to hold the registered intellectual property rights and to exploit the various rights associated with Ian Fleming's estate, including the name "Ian Fleming".

Authors may have trade mark rights in the names by which they become well known, and can demonstrate this either through registered trade mark rights, or through deployment of the name as source indicators in commerce (establishing common law rights).

The Complainants have registered and common law trade mark rights in IAN FLEMING.

The third Complainant is the registered proprietor of two registered trade marks over the word mark IAN FLEMING: one which has effect in the United Kingdom of Great Britain and Northern Ireland (filing number 2271122, filed on May 24, 2001), while the other has effect in the European Community (filing number 2475234, filed on November 23, 2001). Both of these marks are registered over a wide range of goods and services.

During his lifetime, Ian Fleming himself acquired goodwill in the IAN FLEMING mark through use of his personal name as author. These unregistered rights were transferred to the Complainants after his death, and the Complainants have continued to use the IAN FLEMING mark and also acquired goodwill in that mark.

Aside from creating the James Bond character and authoring many books about that character, Ian Fleming was also a travel writer, and published many other novels, including Chitty Chitty Bang Bang (which was adapted to film in 1968 and stage musicals in 2002 to 2005). There have also been two biographies published on Ian Fleming, and several television biographies released.

The name Ian Fleming is well known in its own right, but it has also been extensively advertised and promoted through television and print media advertising, and has received substantial media coverage. An exhibition will be held throughout 2008 and 2009 months at the Imperial War Museum in London, to celebrate Ian Fleming's life. In association with the exhibition, the Royal Mail is releasing six commemorative "Ian Fleming's James Bond" stamps and "Ian Fleming" merchandise will be produced and sold.

Due to the above factors, the distinctive IAN FLEMING mark has become famous and well known worldwide and holds significant valuable goodwill for the Ian Fleming Will Trust. The name has acquired a secondary meaning, as the public associates "Ian Fleming" with the writings of and characters created by the author.

The Complainants use the registered Ian Fleming trade marks, and also license such rights to third parties.

The disputed domain name consists of the IAN FLEMING mark in its entirety.

In either case the WIPO decision was not only clearcut, but also made reference to several other previous decisions involving the registrant.

While a pattern of behaviour in itself is not reason to transfer it obviously indicates abusive use:

here have been a number of findings of bad faith against the Respondent in relation to domain name disputes involving famous people (see for example Larry King v. Alberta Hot Rods, WIPO Case No. D2005-0570 <larryking.com>; Pamela Anderson v. Alberta Hot Rods, WIPO Case No. D2002-1104 <pamelaanderson.com>, <pamelaanderson.net> and <pamelalee.com>, Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560 <tomcruise.com>).

The Panel finds that the Respondent registered the disputed domain name in bad faith.

The disputed domain name currently resolves to the Respondent's Celebrity 1000 website. The Respondent earns revenue from diverting users to its sponsored links on that website. The Respondent's use of the disputed domain name has demonstrably been to attract, for financial gain, Internet users to the Respondent's website, by creating the likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website.

The Panel finds that the Respondent is using the disputed domain name in bad faith.

The disputed domain name has been registered since 1996. Ordinarily, the length of time which has elapsed between the registration of the disputed domain name and the bringing of the Complaint may have been a cause of concern as, in some cases, delay has been considered to be a waiver of rights. However, the Panel adopts the reasoning of the panels in Dire Straits (Overseas) Limited v. Alberta Hot Rods, WIPO Case No. D2007-0778 and Tom Cruise v. Network Operations Center/Alberta Hot Rods, WIPO Case No. D2006-0560. The Respondent has not suffered from the delay and the delay does not impact on the Complainants' right to obtain relief.

The evidence, in the Panel's view, supports the conclusion that the Respondent sought to profit from, or exploit the trade marks of the Complainants. Accordingly, the Panel concludes that the Complainants have satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.

The WIPO UDRP decision regarding craiglist.fr does not hold many surprises.

What is semi-interesting is that the decision gives an overview of craiglist.org, which has been in operation since 1997.

Needless to say the panelist decided in favour of the trademark holder and ordered the transfer of craiglist.fr

The latest IE dispute decision has been published by WIPO and concerns the domain taxassist.ie

The complainant holds several trademarks and other prior rights in the name, but the panel did make it very clear that any of the pending trademark applications and other rights that were established by the complainant after the registration were not taken into account:

Many of the rights relied upon by the Complainant are either, pending applications or rights that accrued after the date of registration of the domain name in dispute on July 30, 2007 and as such merely serve to confuse the issues.

Another interesting element refers to the supposed 24/7 nature of online business:

The Registrant has argued that the Center has miscalculated the date for filing of the Response essentially arguing that because domain names can be registered on a 24/7/365 basis, every day is a working day. Having considered the arguments this Administrative Panel rejects these arguments. If the IEDR Policy had intended such an interpretation, it would not have been necessary to refer to "working days" as a reference merely to "days" would have been sufficient.

The problem with the registrants argument here is that the registry does not process domain registrations 24/7. While it is possible to request a domain at any time the actual registration of IE domains can only be concluded during business hours.

In any case the taxassist.ie case resulted in the domain being awarded to the complainant based on both their existing trademarks and extensive usage of the name.

Irish and international media's interest was sparked in recent months by the dispute over the domain narnia.mobi

Now unless you've been living in a very dark cave far away from the rest of civilised society for the last fifty years, then you'd know that Narnia is the literary invention of CS Lewis. You might also know that Disney has made two films based on the first two books in the Narnia series, with more due to be made.

So what was the dispute about?

According to the registrant:

The Respondent asserts that the sole reason for registering the disputed domain name was to provide his son with an email address containing "Narnia" as a gift. According to the Respondent, his son is an enthusiastic fan of "The Chronicles of Narnia" books. The Respondent registered the disputed domain name shortly after the release of the first "Narnia" movie, at which time his son was nine years old. The Respondent alleges he decided to present his son with this gift on the event of his eleventh birthday on May 20, 2008, corresponding to the release of the second "Narnia" film in the United Kingdom of Great Britain and Northern Ireland ("United Kingdom").

So the question I'd have to ask is why the respondent deemed it necessary to register someone else's trademark. If all they wanted was a domain "containing" Narnia surely they could have opted for something else?

You can read the full decision on the WIPO site.

While the decision was, in many respects, a forgone conclusion, there are some interesting points raised in the decision about what exactly constitutes "bad faith" and how the burden of proof might be distributed.

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You'll have to excuse my feeble attempt at a pun!

The WIPO UDRP decision involving carlsberg.tv is incredibly short and does not contain any surprises.

Carlsberg is an internationally recognised brand - its the 5th largest brewing company in the world!

Carlsberg have a very well established usage and have taken steps to protect their brand in many territories globally:

The Complainant has registered several trademarks containing "Carlsberg" in more than 150 jurisdictions around the world, including the United Kingdom. Additionally, the Complainant is the holder of several domain names incorporating Carlsberg, including <carlsberg.co.uk>, <carlsberg.eu> and <carlsberg.dk>. Furthermore the website "www.carlsberg.com" is the Complainant's general international site.

Since the respondent didn't actually respond the decision was boringly straightforward.

I keep a close eye on the WIPO UDRP decisions, as sometimes they can be very interesting.

In most cases decisions are either upheld or denied and when they are upheld the normal followup would be for the domain in question to be transferred to the IP holder.

However WIPO's latest set of UDRP decisions shows a different line of thought entirely.

In several cases involving pharmaceutical products the panel has decided in favour of cancelling the domains.

But what is to stop someone from simply re-registering them again? Couldn't I or anyone else just grab the domains as soon as they became available for registration.

Maybe I'm missing some finer detail that only an "inner circle" is privy to.

Remember the drunkenhobbit.com decision?
Well there's a new one today covering hobbits.com and hobbitts.com

If you're going to grab a Tolkien related domain choose something truly generic. It will save you a lot of headaches :)

Trying to argue that the term "hobbit" is NOT an invention of Tolkien's didn't work in the past, so how it would work now is beyond me

With the new film adaptation of The Hobbit attracting so much media attention it's hardly surprising that the Tolkien estate is clamping down even more. Of course that could just be a coincidence...