GM Holden Wins Domains

What makes this interesting is that its not just some dodgy cybersquatter who is registering domains, its a car servicing company! They decided to register holdenplatinumservice.com.au, holdenservice.net.au and servicingholden.com.au. You can guess what happens next

Holden claims the domains are misleading and deceptive and WIPO finds that all the domains were:

1. Registered in bad faith.

2. Confusingly similar to GM Holden’s trademarks.

and the list goes on…. This is a lesson for Domainers and SEO companies who think they can “own an industry”. Here is one particular quote I like:

“the multiple registrations of domain names, not only including the Complainant’s trade mark but those of many other motor car manufacturers, strongly leads to a conclusion that the Respondent is seeking to divert the business of Internet users away from the authorised service centres of the Complainant and other manufacturers.”

Good decision WIPO.

Google Gets Googblog.com Back From Indian

Another day, another WIPO (World Intellectual Property Org) case. Google vs Harit Shah for the domain name googblog.com. For some strange, unforseen, unknown reason, it was apparently too close to the Google trademark. Who would have thought?

Shah said, “I was in a bad faith that I can legally keep the domain googblog.com. I really did very unfair to Google. I sincerely apologize to Google for infringement by misusing their intellectual property.”

Via: SiliconIndia and TMC.

WIPO To Go Paperless For UDRP – Saves HOW MUCH Paper?

WIPO has sent a letter to ICANN to “seriously consider moving towards an essentially paperless UDRP”. Here are some interesting stats that appear in the letter:

• Over the lifespan of the UDRP, the total number of pages filed with WIPO alone is estimated at some ten million (roughly equivalent to over one thousand trees).

• The approximate number of paper pages from Respondents is over 300,000.

The letter outlines a number of reasons including:

1. Environmentally friendly
2. Efficient – leading to cost savings
3. Most already file electronically anyway
4. 4% email bounce back in 2008
5. The average time that elapsed between WIPO’s receipt of the electronic Compalint and its receipt of the hard copies was four days. “A delay in receipt of a Response in hard copy may also delay the Panel’s review of the complete record“.

I think this is a great move. Although I’m not surprised that its WIPO taking the initiative to suggest an improvement to an ICANN process. It just goes to show how inefficient ICANN is.

Although this week I did have similar, strange technology interactions with two companies:

1. Company A – a webhost asked me to print out, scan in and email them a copy of an invoice that I received via email. Apparently their process said that email (text) wasn’t good enough.
2. Company B – asked me to email them, post a hardcopy and fax them the same document.

Its 2009 and we are still using fax machines and printing stuff out – unbelievable. Shouldn’t we all have jet-packs by now?

WIPO Adds Aussie Lawyer to UDRP Panel

WIPO has added Nick Weston, a Melbourne based lawyer to the UDRP Panel. You can read all about Nicks bio here. There are now 29 panelists for Australia.

Here are some WIPO stats:

• The number of cases administered by WIPO under UDRP procedure – 14,000+
• Parties have been located in 144 countries
• Internet domain names – 25,000+

Perhaps the WIPO workload is increasing?

Howard Neu – UDRP & WIPO Unveiled – Live from Traffic DownUnder 2008

Howard needs no introduction, he is the co-founder of TRAFFIC conferences along with Rick Schwartz. Before launching into the speech, Howard commented that TRAFFIC will be working on a “Code of Standards” for domainers with a launch date of April 2009. Interesting…..

UDRP

• Is there evidence of bad faith?
• Demonstrating rights or legitimate interest. eg: bona fide offering of goods and services, commonly known by that domain name, legitimate non-commercial or fair use.

How Is It Supposed To Work?

• Impartial arbitration
• Choice of forum
• Inexpensive resolution in that there are no hearings, oral argument.

How Does It Work?

• Pleadings only
• Number of panelists could be important. i.e: some may rule more for complainants or respondents
• No official stare decisus (normally ensures a uniformity of law)

There is nothing to say that a panelist has to follow precedent.

Stragtegy In How To Pick A Panel

• Look at  the previous decisions made by panelists.
• If you remove all the cases where there is no response by a respondent; a panelist may look balanced.

WIPO v. NAF

• The problem is if you don’t respond, you get a track record (as a cybersquatter).
• In another case, the panel will look at this track record. You have to be careful here!

Landmark Cases

Ingram micro vs ingredients (WIPO 2002)

• Ingrammmicro.org, ingrammmicro.net
• 2 TM’s include “Ingram Micro”
• Complainant labeled Respondent cybersquatter
• No response
• No effort to sell domain to mark owner or competition
• No evidence domain acquired to disrupt business
• etc..

Hebrew University v. Alberta Hot Rods (WIPO 2002)

• alberteinstein.com
• Einstein founder and involved with complainant
• Domain redirects to Respondent’s celebrity1000.com
• Previous panels found that Celebrity1000.com fails to offer legitimate goods or services
• No common law trademark
• celebrity1000.com offers links to goods and services, so its a legitimate business.

Falwell vs Cohn (WIPO 2002)

• jerryfalwell.com etc..
• Complainant fails to show that his famous name is used as a label for goods adn services
• WIPO holds that POLICY should be limited to personal names commercially exploited.

Hero.com – Involves John Berryhill

MyKnot.com (WIPO 3/10/08) – Respondent did not reply. The case had been heard by another panel and got a negative result. No new evidence.

BakersDelightLies.com (WIPO 2/25/08) – Australian case. Franchisee of Complainant – left and created an attack site. Panel distinguished from “sucks” – no commercial use – no advertising or link

AlignTechnology.com (WIPO 3/31/08) – Complainant has AlignTech.com for orthodontics – Respondent picks up dropped names – Panel excluded additional materials from Complainant as not appropriate. Again, the respondant didn’t file a reply, couldn’t offer any additional materials.

TastyTwist.com (WIPO 10/13/08) – Domain parked at Sedo. Respondent offered to sell for $10k after receiving C&D – no evidence of prior complaints – no bad faith.

ClickFarm.com (NAF 10/28/09) – No response – Parked at a PPC Monetizer – Regged before the Complainant obtained Trademark – No bad faith.

FreemanHonda.com (NAF 9/2/8) – No response. Complainant had no registered Trademark and was in business since 2005.

Stats for Defense vs Default

• If there is an obvious loss, settle and give up domain. Ask complainant to withdraw the action (so you dont have a track record).
• Record used against respondent in future cases
• Never agree to not register other domains. It may make you look bad in future cases.

WIPO Takes Down Fake Arsenal Site

Its been reported that official-arsenal-tickets.com had been set up in bad faith to divert business from the club’s own site. For those interested in the details its WIPO case for D2008-0842.

While there have been various media reports speculating about who made the complaint; what I do know is that the complainant was The Arsenal Football Club Public Limited Company and the respondent was Domains by Proxy, Inc./Official Tickets Ltd.

Family Loses narnia.mobi to CS Lewis

The parents of 11 year old boy registered narnia.mobi back in Sept 06 so that their son could use it for email.  Fast forward to 2008 and the World Intellectual Property Organisation rules in favor of the C. S. Lewis estate.

The mother, Gillian Fergusson told the BBC that she was shocked by the decision. “We provided very clear statements from the internet registration company saying that we had not tried to make any money and yet somehow it has just simply ignored the evidence.”

Apparently, registering an e-mail address for a child is not legitimate use!

Ms Fergusson said: “We have not done anything illegal or wrong, we were perfectly entitled to have this domain name.

“There was three months in which they could have registered this. There was a private period for any trademark holder to register any .mobi domain name when they went on sale in 2006.

“We did not buy ours until after that three-month period had expired and it was open for public sale.”