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Decisions: Not Even Close
Mon, 04/08/2013 - 10:40 — Steve Levy — PermalinkSometimes a UDRP complaint comes along which obviously never should have been filed in the first place. The Restored Church of God's complaint against Alexa Properties, LLC over the domain name RT.org, filed with the World Intellectual Property Organization, falls into that category.
The Ohio-based church likely did not consult outside UDRP experts when filing the complaint, as it was "represented internally," and this lack of experience contributed to the filing meeting not one, not two, but none of the required elements for domain name transfer.
The Complainant asserted common law rights to the mark "RT", as it operates a magazine called The Real Truth Magazine, and purportedly uses "RT" as an abbreviation commercially. The Complainant also alleges that consumers are confused by the Respondent's use of RT.org to host links in lieu of legitimate content and alleges that it offered to buy the domain name from the Respondent for $5,000, only to be countered by a $30,000 price tag.
The Respondent pointed out that his use of the domain name is largely irrelevant for purposes of the UDRP because the Complainant has no prior rights to the mark. The respondent registered RT.org in 1998, a full four years before the Complainant alleges any common law rights to the RT mark, and moreover, those common law rights are very suspect, according to the Panelist.
In the end, the Panelist ordered that the domain name remain with the Respondent, as the Complainant could not prove any rights to the disputed domain name. It also narrowly avoided a finding of reverse domain hijacking. Complaints like this should be a lesson on how important it is to consult UDRP experts before filing a complaint, because they can save time and money, as well as a brand owner’s valuable reputation.
Decisions: Adjudication Situation
Mon, 03/25/2013 - 09:33 — Steve Levy — PermalinkSometimes UDRP complaints come along that are obvious attempts at gaining control of a domain name to which the Complainant simply does not have rights. A complaint filed by Adjudicate Today Pty Limited against the domain Adjudicate.org.au, filed with the World Intellectual Property Organization (WIPO) against The Institute of Arbitrators and Mediators, is a clear example of this form of over-reaching.
Quite simply, the Complainant attempted to build a case against the Respondent based on mistruths and stretched allegations. First of all, the Complainant stated that its common law rights to the term "Adjudicate Today" should give it rights to the disputed domain name based on it being identical or confusingly similar.
Additionally, the Complainant claims that the site is being used to deliberately mislead customers searching for the Complainant's services, despite the different names of the organizations. Finally, the Complainant questions the Respondent's trading company's status as a non-profit.
When a complaint like this is filed, the Panelist usually breaks down and sifts through the Complainant's falsities comprehensively, and this case was no exception. The Panelist found that the Complainant failed to satisfy any of the three requirements for domain name transfer, and as a final blow, found the Complainant guilty of Reverse Domain Name Hijacking.
This complaint should be a lesson to brand owners that UDRP complaints are not a quick fix if one does not have a solid case and should not be used merely to gain negotiating leverage. UDRP Panelists have seen it all, and they are very rarely fooled by complaints without merit.
Decisions: Is There a Meme for Losing a UDRP Complaint?
Mon, 03/11/2013 - 00:29 — Steve Levy — PermalinkPopular meme-generator Cheezburger Inc. filed a UDRP complaint against rival site WeKnowMemes over its primary domain name WeKnowMemes.com with the World Intellectual Property Organization (WIPO) citing infringement of one of its registered trademarks. It was up to WIPO to determine if the Complainant actually had rights to the disputed domain name or if the UDRP complaint was a thinly veiled bid to take down a competitor.
Cheezburger filed the UDRP complaint primarily on the grounds that the disputed domain name was identical or confusingly similar to its registered mark KNOW YOUR MEME. Additionally, the fact that both parties provide similar content might confuse Internet users searching for the Complainant's content.
To clarify, both sites are active generators of "memes," which are broadly defined as "concepts that spread from person to person via the Internet." Memes can take the form of videos, images, written content, virtually anything that can be shared by Internet users. Cheezburger Inc. is most famous for its "lolcats" memes and is widely seen as one of the foremost meme producers on the web.
WeKnowMemes.com, though, is also a popular page, snagging almost 200,000 unique visitors in the month of February, according to Compete.com. The Respondent defended itself by saying that the established mark is made of generic terms and expressly states that it does not cover all uses of the term "meme.
In the end, the WIPO Panelist denied the complaint. It said that the question of whether or not the domain name is identical or confusingly similar to the established mark is a close call but it found that the Respondent had a legitimate interest in the domain and that it did not have a bad faith intention in registering and using it. This case highlights the fact that a UDRP complaint is not the appropriate avenue for attempting to quell a rival site, especially without strong evidence.
Decisions: "Eye" for Detail
Mon, 02/25/2013 - 10:26 — Steve Levy — Permalink
Here’s another example of why filing UDRP complaints should be left to the experts. Even lawyers experienced in trademark litigation may not know their way around this tricky field.
At first glance, it would appear that Eyemagine Technology would have a good chance in its UDRP complaint, filed with the World Intellectual Property Organization (WIPO), against Clough Construction concerning the domains Eyemagine.com and Eyemagine.info. However, the Complainant made a number of critical errors that jeopardized its chances of reclaiming the domain name.
Eyemagine is a California-based design and tech firm specializing in ecommerce, and it owns both design and character marks for the term EYEMAGINE. The Respondent, which makes custom home decks, is also a California company, and its current Eyemagine domain names redirect to its construction company homepage.
While the Complainant might own character and design marks for EYEMAGINE, they were not registered until 2012 and 2009, respectively, more than a decade after Clough Construction registered Eyemagine.com in 1996. Thus, its claim that the domain names were registered in bad faith seems dubious, given that the Complainant's company did not even exist then.
Additionally, the Respondent urges the Panelist to consider charging the Complainant with Reverse Domain Name Hijacking (RDNH), given the fact that after negotiations on the sale of the domain name between the parties broke down, the Complainant filed a UDRP complaint close to the year-end holidays and without telling the Respondent's attorneys. The Respondent believes that the Complainant was trying to cut response time short to have a better chance of winning the UDRP complaint.
In the end, the dual filings seem to reveal two approaches to the UDRP Complaint. The Complainant attempted to play dirty, being dishonest in its filing and attempting to limit the Respondent's ability to properly defend itself. The Respondent, on the other hand, clearly and concisely responded to each of the Complainant's allegations and made a strong case for RDNH. The WIPO Panelist sided with the Respondent and, in finding the Complainant guilty of RDNH, said “It is no excuse that Complainant may not be familiar with clear Policy precedent, the Policy, or the Rules."
This complaint should be a lesson to all brand owners to play by the rules and to hire legal counsel specifically experienced in UDRP complaints. Ultimately, the truth will emerge.
Decisions: The "Fine" Print
Mon, 02/18/2013 - 10:13 — Steve Levy — PermalinkThe term "fine tubes" generally refers to a variety of metal precision tubes used in construction and manufacturing. Fine Tubes Ltd. is a UK-based manufacturer of these tubes that ships its products around the world. Fine Tubes Ltd. is also the Complainant in a UDRP complaint with the World Intellectual Property Organization (WIPO) for the domain name fine-tubes.com against Ethen Rohre, a German company that makes the same type of tubes.
Follow all of that? The crux of the issue is Fine Tubes Ltd. claiming rights to a term that is both its company name and a generic term used to describe the type of tubes that both companies manufacture. Fine Tubes already owns FineTubes.com, which redirects to its homepage, FineTubes.co.uk, so this seems like a case of attempting to stop a competitor from using a domain name that could be potentially confusing.
The major issue in the complaint is that Fine Tubes Ltd.'s attempt to trademark the term FINE TUBES was rejected by the Office of Harmonization for the Internal Market (OHIM), which registers the Community Trade Mark in the European Union. The Complainant failed to disclose this rejection, which essentially consisted of OHIM saying that the term was too generic to claim rights to, and the Respondent made note of it in its submission.
WIPO explained that it could not refute OHIM and say that Fine Tubes Ltd. has rights to such a generic term, thus the domain name, so it rejected the complaint and ordered the domain name to remain with the Respondent. This case should be a lesson to all brand owners not to rely on UDRP arbitration to decide differently from previous trademark rulings, because the body will most likely agree with precedent.
Ron Paul's Domain Name Dilemma
Thu, 02/14/2013 - 13:21 — Josh Bourne — PermalinkRonPaul.com would be the intuitive destination for Internet users searching for the official website of former Texas Representative Ron Paul. Visitors to the site soon discover that it is not an official page but rather a fan page, a fact that is clearly displayed across the top of the site, which was first registered in 2000 and started as a fan site in 2008. Now, Ron Paul wants control of the site, as well as RonPaul.org, which the site's owners also hold.
Until now, Paul has used the site CampaignForLiberty.org as his official online home. The site, which primarily hosts content pertaining to the Campaign for Liberty, a political nonprofit that Paul created, features information about the politician himself as well, but is not as intuitive for individuals searching for Ron Paul's homepage.
Now that Paul wants control of RonPaul.com, he's seeking help from the World Intellectual Property Organization (WIPO), a U.N. agency, where he filed his UDRP complaint, according to Mashable. It is interesting that the former Texas Rep., who has been openly anti-U.N. in the past, calling it " rife with corruption and backroom deals" and anti-American in a 2003 letter, now is looking to the organization to help him reclaim a domain name. WIPO is the most widely known agency for resolving UDRP complaints, but Paul alternatively could have filed with the National Arbitration Forum, which has a higher proportion of American panelists. It is even more interesting, however is that he seems to be looking to reclaim a site that is supportive of his agenda, and doing so after his retirement from Congress, which occurred after his term ended in January.
Part of a sound domain name reclaim plan is prioritizing which domain names to pursue, and generally, pursuing fan pages can do more harm than good. It's also an unexpected move since Ron Paul and his campaign have been known for embracing the power that the Internet has to reach, cultivate, and activate a fan base, experimenting with platforms such as YouTube to do get his message out.
The sites' owners criticized Paul's filing in a post displayed on RonPaul.com. In it, they explain that the filing is "not cool," and that they tried to arrange a deal with Paul in which they would exchange RonPaul.com and its mailing list of 170,000 for $250,000, which they believe is a good deal for the politician. When he didn't accept and filed his UDRP complaint, the owners hired a lawyer to represent them in their attempt to maintain control of both domain names.
The domain name owners believe that they have a good case, but we will see what the panel decides.
Decisions: Trademark Protection Company Can't Protect Its Own Mark
Mon, 02/11/2013 - 10:21 — Steve Levy — PermalinkDutch company Merk-Echt describes itself as a "trademark agency" committed to protecting its clients' intellectual property and combating trademark infringement. You would think that a firm dedicated to trademark matters would have its own trademark and domain portfolio in order, but a recent UDRP filing reveals otherwise.
Merk-Echt filed a complaint with the World Intellectual Property Organization (WIPO) against Tilma Consultants over the domain name MerckEcht.com. In its complaint, the company claims that it holds registrations for both a stylized logo trademark and a word trademark in Benelux (the region comprised of Belgium, the Netherlands and Luxembourg), which were originally filed by the Respondent in 1999 and 2001, respectively but then handed over to Merk-Echt. Why would the Respondent simply hand over the marks? It turns out that Tilma Consultants was one of the founding shareholders of Merk-Echt, and Merk-Echt agreed to purchase Tilma's shares of the company in 2009.
As of now, the disputed domain name hosts the official page for Merk-Echt, but the company fears that the Respondent will soon take over site content. According to the Complainant, it talked with the Respondent in early summer 2009 about transferring the domain name to the Complainant, but discussions fell apart that July and the domain was never transferred. The Respondent claims that the payment for the shares and domain transfer was never received, so the transfer never occurred.
The Panelist sifted through the arguments and found that although the disputed domain is identical or confusingly similar to the Complainant's mark, there was no evidence that the Respondent initially registered the domain name in bad faith. Additionally, he suggested that the matter would better be settled in "ordinary court," before deciding that the domain should remain with the Respondent.
This case should be a lesson to any brand owners regarding trademarks and domain name protection, especially in cases of company division or changes in ownership. When a significant change like this happens, it's critical for domain names and trademarks to come as a package deal to avoid disputes like this one down the road.
Decisions: Model Complainant
Mon, 02/04/2013 - 10:33 — Steve Levy — PermalinkIt might seem strange that one of the world's most recognizable supermodels over the past two decades does not own her name as a .COM domain, but Cindy Crawford falls into this category. It seems like the model finally had enough, however, and she filed a UDRP complaint at the World Intellectual Property Organization (WIPO) against Julian Garcia, the owner of CindyCrawford.com.
It's not clear what finally pushed Crawford to try to gain control of the domain, because she states in the complaint that she has never owned it, but since August, 2012, the site has hosted pornographic content related to an actress who also uses the Cindy Crawford moniker. It's possible that this "pornosquatting" compelled the Complainant to take protection of her brand image more seriously.
Garcia did not file a response to the complaint, but it's clear from the Panelist's decision that even if he had submitted something, the odds would have been stacked against him. Crawford owns trademarks of her name in more than 50 countries and according to the WIPO, is famous enough that she might have not even needed these registrations to claim rights to the disputed domain name. The Panelist also found that the Respondent had little to show in terms of rights or legitimate interests in regards to CindyCrawford.com and ordered the transfer of the domain name.
According to the filing, third parties have controlled the domain name since 2004, and Crawford used Cindy.com as her professional site. It's not clear what took Crawford so long to file this UDRP complaint, but by the time that she did, she had a rock solid case to earn it back. This case should be a lesson to all celebrities of how important it is to own the most intuitive domains related to your personal or stage name, because third parties could be using them to earn countless hits on unauthorized, and even harmful content.
That's My Name, Says UDRP Complainant
Mon, 01/14/2013 - 11:22 — Steve Levy — PermalinkUDRP complaints involving personal names are tricky, especially if the complainant or respondent holds a trademark for the name in question. A German lawyer learned this firsthand when he filed a UDRP complaint against a respondent called Eighty Business Names with the World Intellectual Property Organization (WIPO) over the domain name Lambsdorff.com.
Konstantin Graf Lambsdorff, a Berlin-based attorney who has practiced law for 20 years, owns a German trademark for the word LAMBSDORFF, registered in September 2012. He states that this mark entitles him to the domain name which, at the time of filing, redirected to a third-party website selling various goods and services apparently unrelated to the Respondent. The Cayman Islands-based Respondent did not reply to the Complainant's contentions.
Without a response from Eighty Business Names, the UDRP categorized the case as a default. In such cases, the Panelist must draw conclusions from the information at hand, and a victory for the Complainant is not assured. In this case, the Panelist found that the disputed domain name was identical or confusingly similar to the Complainant's established mark, but he could not prove that the Respondent registered the domain name in bad faith.
The domain name was registered in 2004, a full eight years before the Complainant obtained his trademark. The Panelist found no evidence that the Respondent knew of the Complainant at the time of registration, and although the redirects showed "some evidence of bad faith use," he found "no evidence of bad faith registration” and ultimately decided that Lambsdorff.com would remain with the Respondent.
UDRP disputes involving personal names are always difficult, especially because it is difficult for the Complainant in this case, not an internationally recognized celebrity, to prove common law rights to a certain name. The trademark filing helped in one part of the case, but it ultimately couldn't completely satisfy the Panelist. Any individual looking to establish a presence on the Internet should register relevant domain names proactively to avoid having to file a UDRP complaint.
This Season's New Hot Spot? WIPO
Wed, 09/05/2012 - 11:19 — Steve Levy — PermalinkAccording to an article in The Guardian, the number of UDRP decisions overthe past 12 months is the highest figure since 2007.
Since July 2012, the World Intellectual Property Organization (WIPO) has decided nearly 3,000 cases of domain disputes. So far this year, the body has ruled on almost 2,000 cases and is on pace to surpass last year’s mark of 2,764, with one of the busiest decision-making periods of the year still to come.
The Guardian attributes this rise, at least in part, to the increasing importance of e-commerce, as a number of high-profile fashion houses have looked to WIPO to seize domain names this year. Armani, Burberry, and Dior are just a few of the brands that have filed multiple complaints with the organization this year in attempts to combat trademark infringement and the sale of counterfeit goods.
British Vogue reports that Gucci, for example, has already submitted six UDRP complaints this year, earning victories that resulted in the transfer of over 100 different domain names. Most of the contested domains employ similar combinations of the trademarked name and words like “cheap,” “sale,” and “shop” to try to maximize hits from Internet users looking for specific brands.
Most of the brands in question will not use the domains in question to sell goods or services themselves. They typically are seeking to prevent cybersquatters from using their trademarks for personal gain. As cases like the National Arbitration Forum’s (NAF), recent decision on the domain MyFakeOakleySunglasses.com show, however, only specific cases fall within the guidelines of a UDRP complaint. NAF ruled that, despite the inclusion of the Oakley mark and the obvious bad-faith use of the domain name, the inclusion of the word “fake” prevented the mark from being “confusingly similar” to users and qualified this as a case of copyright infringement, not domain dispute. Brands looking to win domains through UDRP complaints should consider WIPO and NAF their allies against cybersquatters, but they should also make sure they are correctly using the UDRP tool when they do so.
The current figures show that brands are becoming increasingly active in protect their trademarks online, a trend that should only continue through the rest of the year. However, while there are some big opportunities to reclaim valuable names, it is unsustainable and unnecessary to pursue all opportunities. Brands should prioritize reclaim according to the value of the domain.
