Entries tagged with “wipo” 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.

One of the WIPO decisions published today relates to gillette.ro.

The registrant (respondent) didn't make any submissions in their defence, so the decision could have been quite banal.

However some of the panelist's comments under the "Registered and Used in Bad Faith" section are quite interesting under:

The Panel disagrees with the Complainant's submission that the only conclusion that can be drawn from the registration of a domain name consisting of a well-known trade mark such as the Complainant's GILLETTE trade mark and the history of the Respondent's similar conduct in respect of other well-known trade marks is that the Respondent registered the Domain Name in the hope of obtaining financial compensation from the rightful trade mark owner.

It appears to the Panel that while this is definitely a possibility, such an intention cannot simply be assumed in the circumstances as the Complainant has not adduced any evidence as to the Respondent's offer for sale or other attempt at reaping financial benefits through registration of the Domain Name. The Panel notes that the Domain Name is not in use, and does not resolve to any page which would suggest that the Domain Name is for sale.

Put in simpler English. You can't just make assumptions. You need to provide evidence.

Ultimately the case was won by Gillette, but the "assumptions without evidence" are an interesting sidenote.

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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

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

Nokia have won a WIPO decision over two domains that are fairly obvious trademark infringements:
nokiachat.com
nokiachat.net

You can read the full decision here

While the decision isn't particularly interesting, there are a couple of minor points that are of interest. While the registrant did not lodge a formal response they did reply via email, however the manner in which they did this was not conformant with the WIPO rules.

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.

The decision regarding facebook.com.au has been published

The respondent tried to use the defence that no trademark existed in Australia at the time of registration, however that argument was rejected.

The respondent also tried to argue that they were intending on using the domain name for a legitimate service.

You can read over the decision, with arguments from both sides and make up your own mind.

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...