European data protection advocates have already been fighting a long fight against the publication of whois data, leading to an introduction of a “Whois Procedure for Conflicts with National Laws” at ICANN in 2007.

Related posts:

• Through Thick & Thin: ICANN RFP for Registrar Data Escrow Services
• Iron Mountain to Provide Additional Audit Services for Registrar Data Deposits to ICANN
• Privacy Protection for .CA Domain Names Kills Business for Domainers
• .EU IDN Launch: German Language Domains Take Top Spots
• New York State Makes Their Own Domain Laws

8 years after the introduction of  Google’s Gmail email offering, it appears it has settled a dispute over the use of the brand in Germany as shown by a transfer filing with the German patent office. When Google introduced the service worldwide in 2004, they encountered problems with the name in Germany, England and Switzerland, which forced Google to operate under the name GoogleMail instead. While the case in Switzerland was settled in 2009 and in the UK in 2010, the  negotiations in Germany continued until the trademark was transferred last Wednesday. The domain gmail.de changed ownership on the same day and is now also owned by Google with the domain now displaying a Mark Monitor holding page.

The German brand for “G-mail… und die Post geht richtig ab” (gmail – and off the mail goes, based on a German idiom), which was registered in 2000 was owned by entrepreneur Daniel Giersch who enforced his rights in 2005. His email service is now available under the domain and name “@quabb.com”. While the price for the settlement is not known, Giersch turned down an offer of 250.000 Euro from Google for the mark and domain in 2006.

Google also had trouble obtaining the domain YouTube.de, but was able to settle with the owner of the domain in 2007.

[via Computerworld | Golem.de (German) | SZ (German), thanks to Christoph Kilz]

Related posts:

• Google Loses Domain Name Dispute Over Groovle.com
• Google Introduces Public DNS Service
• Google Launches URL Shortener
• Google Sued Over Poor Traffic Conversions From Parked Domains
• Harvard Professor Says Google is Profiting From Typo-Squatting

Recently offshore domain registrar Internet.BS was called out by KnujOn as one of the registrars that “see no evil” when it comes to supporting online pharmacies and according to KnujOn’s report (PDF) does not enforce the ICANN rules for invalid whois.  Following the release of the report, Internet.BS suspended 176 pharma related domains.

Today, the registrar continues to address the issue by publishing a statement that announces the implementation of a new domain name registration policy for online pharmacies. The policy became part of the company’s Terms and Conditions.

According to Internet.BS’ press release:

The foundation of the policy is that a customer may register, maintain or transfer-in a domain name to be used for an online pharmacy only if the online pharmacy is not listed under the National Association of Boards of Pharmacy’s (NABP) “Not Recommended Sites” list. Exceptions will be granted to domain names that are certified by one of the four recognized online pharmacy accreditation services: the Canadian International Pharmacy Association (CIPA), PharmacyChecker.com, the Pharmacy Accreditation Services (PAS), or the NABP’s Verified Internet Pharmacy Practices Site (VIPPS).

Internet.BS also goes on to point out the responsibilities of domain name registrars with regards to suspensions and deletions of domain names, as

Related posts:

• “No Evidence of Front Running” Says Internet Security Expert Following ICANN-Commissioned Study
• ICA Responds to Kentucky Seizure of Gambling Domains
• Media Corp Wants to Sell Gambling.com to Fund Acquisitions
• Wall Street Journal: “a Numeric Trend Blossoms in Internet Domain Monikers”
• U.S. Cracks Down on Internet Giants for Supporting Online Gambling

The recent decision in autoownersinsurance.com is a perfect example of things going from worse to horrible. While the decision itself contains many substantive flaws, my overwhelming issue is with the lack of due-process rights evidenced by this UDRP.

The complaint was limited to a 3-paragraph argument which asserted a USPTO registration for “Auto-Owners”. The complaint asserted lack of legitimate interest because the domain was used in PPC and included links to insurance (surprise). The complaint did not allege bad faith registration and allegations of bad faith use were limited to the same PPC argument.

Read more after the jump.

The timely response explained that the mark was a “design” mark obtained under 2(f). For those unfamiliar, a 2(f) application is required when a mark is not “distinctive”. The registration is granted based on the ex-parte submissions of the applicant. “Ex-parte” means that no one is allowed to challenge the application. We argued the domain was not identical or confusingly similar given the additional descriptive term which substantially expanded upon the mark. We noted that while the complainant alleged common law trademark rights in “auto owners insurance”, there was not one scintilla of evidence (not even a hair) supporting the claim.

Complainant’s legitimate interest and bad faith claims were limited to the fact insurance links appeared on the PPC page. The PPC results for insurance were hardly surprising since the domain was inherently descriptive. Insurance is after all required in most places and of obvious interest to “auto owners”.

On the February 14^th respondent received Complainant’s supplemental filing (“CSF”) which my email records showed to have been filed late.The CSF included 13 pages of argument and 9 new exhibits covering 191 pages, representing over 7.3 MEGABYTES of data. The CSF substantially amended the original complaint and for the first time included evidence supporting a common law trademark claim. Respondent started preparing a reply which was set for filing on the night of the 21^st. Just prior to filing, Respondents received a decision dated February 21^st! The decision makes it clear that the entirety of the CSF was considered by the panel. The decision does not even discuss the propriety of the CSF.

It is shocking that a UDRP panel would issue a decision 4 working days after receipt of a CSF, particularly one that was of such length and magnitude. There was no communication from the panel and four (4) days to respond to what amounted to an entirely new complaint with substantially more allegations and evidence is blatantly unfair. The timing of the decision implies that it was written on Friday for submission on Monday and immediately issued on Tuesday. Given the length of the decision (13 pages), it is unlikely to have been written on Monday and I have my doubts that a 3-member panel would have worked over the weekend on a UDRP.

Aside from the lack of opportunity to respond, I was personally shocked that the panel would have the CSF considered at all. The UDRP provides for supplemental filings only upon panel request.

12. Further Statements

In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.

Although NAF has its notorious Supplemental Rule 7, NAF panels have held that SR 7 is controlled by Policy Paragraph 12 (“[T]he controlling provision is Paragraph 12 of ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), under which discretion to request such supplementation rests with the Panel.” (Deep Foods, Inc. v. Jamruke, LLC. c/o Manish Patel, FA0648190 (NAF April 10, 2006)). SR 7(f) prohibits supplementals that would amend a complaint.

Even those panels accepting supplemental filings have limited them to exceptional circumstances. Prior panels have repeatedly held that and the failure to submit evidence of trademark rights does not qualify as “exceptional” and “does not constitute sufficiently exceptional or proper circumstances for the Panelist to exercise discretion and to request any further information from the Complainant.” (Autobytel.com inc. v. Sand WebNames, D2001-0076); see also: Universal City Studios, Inc. v. G.A.B. Enterprises, D2000-0416 “There is no provision in the Rules for a party to file an additional submission without leave of the Panel.”).

The Policy specifically limits the breadth of supplemental rules:

“Supplemental Rules means the rules adopted by the Provider administering a proceeding to supplement these Rules. Supplemental Rules shall not be inconsistent with the Policy or these Rules and shall cover such topics as fees, word and page limits and guidelines, file size and format modalities, the means for communicating with the Provider and the Panel, and the form of cover sheets.”

By listing examples, the Policy makes it clear that supplemental rules are permitted to cover only non-substantive matters. Imposing a 5-day deadline for a supplemental reply is clearly non-administrative and such a short period inherently conflicts with the Policy.

In this decision the panel ignored the language of Paragraph 12 AND the prior precedent which limits supplementals to (a) those requested by the panel and (b) to those reflecting exceptional situations where Complainant could not have reasonably anticipated the need to incorporate the supplemental matters in the complaint.

By ignoring Paragraph 12 and the Policy limitation on supplemental rules, the respondent is faced with a bush-whacking opportunity. The Complaint has all the time in the world to prepare and file the complaint (even laches is not a defense). The Respondent is limited to a 20-day window. The CSF amounted to a complete “do-over”. The complainant filed a boiler-plate “place-holder” complaint and then filed its “real” complaint as a “supplemental” leaving Respondent with virtually no time in which to respond.

Given the repeated references to fairness (both in the UDRP and in NAF’s own website), the issuing of the decision without an opportunity to respond is morally and legally wrong.

ICANN must resolve this issue. NAF’s SR7 is in inherent conflict with the UDRP which is the only binding obligation of the respondent. The ADR provider may not adopt rules that are in conflict with the UDRP and the panels may not enforce supplemental rules to the extent they are in conflict with the UDRP and the basic concept of fairness that is supposed to prevail under the Policy. By failing to address such abuse, ICANN is exposing the entire contractual arbitration process to distain and legal challenge. While not perfect, stability and inherent fairness is fundamental to the proper functioning of the UDRP. The panel (and NAF) in this case ignored both.

Related posts:

• UDRP to go (partially) Paperless as of March 1, 2010
• Robert Arkow keeps MetroLinkRider.com – Wins UDRP Ruling
• Expanding Interpretation of UDRP Helps German Bank Win ‘Domain Lottery’
• Report on UDRP Decisions from National Abitration Forum Issued
• ICANN sends notice of breach to registrar for failing to comply with the UDRP

Although the UDRP has functioned for over a decade, the evidence continues to mount in favor of a certification process so all can be assured that panelists have the proper legal knowledge and address claims seriously. Examples abound of panel errors but I have seen few that competes with the likes of Hardware Resources, Inc. v. Yaseen Rehman, Claim Number: FA1201001423229 (HardwareResources.org), a recent decision by NAF-favored panelist Atkinson (see the related study by Zak Muscovitch).

In Hardware Resources, the panelist was so absorbed with the Complainant’s assertions that he failed to examine even the most basic aspects of the claim. Granted the case was a default. But that provides little excuse given the obviousness of the problems. Given Mr. Atkinson’s litigation experience (he authored an article entitled “How to Respond to Trial Objections in 1995), I am somewhat perplexed.

Complainant asserted 4 registered trademarks for “HR Hardware Resources”. A 10-second trip to the USPTO site satisfied my surprise that the PTO would allow registration of such a descriptive trademark. Complainant’s “trademarks” consisted of 2 text marks and 2 design marks. Each of the marks contained the following disclaimer:

“NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “HARDWARE RESOURCES” APART FROM THE MARK AS SHOWN.”

The significance of the disclaimer is of course that the Complainant had expressly disclaimed the words “Hardware Resources” if they did not appear with “HR”. Perhaps Mr. Atkinson (or more likely the intern at NAF who may have written the decision?) missed that bit.

Notwithstanding the clear disclaimers, the Mr. Atkinson boldly stated:

“The differences between the mark and the disputed domain name include the deletion of the initial letters “H” and “R” of Complainant’s mark, the removal of the space between the terms, and the addition of the generic top-level domain (“gTLD”) “.org.” The Panel holds that removing letters from a mark does not differentiate a disputed domain name from the mark.”

Had Mr. Atkinson (or his associate) taken 20 seconds of time he could easily have discovered that the elimination the “HR” was in fact material for the simple reason that Complainant held no trademark rights in their absence. Actually, come to think if it, the disclaimer would have been printed in the trademark registration certificate that Complainant surely produced.

From this highpoint, the analysis gets only worse. Legitimate interest is found lacking because “using a confusingly similar disputed domain name to host pay-per-click links and pop-up advertisements, whether competing or not, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) and 4(c)(iii).” Of course no mention is made of the descriptive nature of the asserted trademark or of the domain.

The authority for the panelist’s position? Two NAF decisions, Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) and ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007). The panelist was obviously not familiar with either of the decisions. Hewlett-Packard addressed the domain HPCanada.com. HP is obviously a famous, non-descriptive mark and there could be no legitimate interest in using the domain to display links for computer equipment. Alpitour dealt with the domain BravoClub.com. The asserted mark was used for a hotel chain and obviously not descriptive; respondent used the domain for PPC for (surprise….) hotels. Exactly how HardwareResources.org presents a factual or legal scenario that is even close to Hewlet-Packard or Aplitour is a mystery.

Going from bad to worse, Mr. Atkinson next finds bad faith because Respondent offered to sell the domain to the Complainant for a whopping $40.00. Surely this is a joke. The opinion is apparently based on an empty allegation by complainant. God forbid there be any reference to evidence. I am always amazed how far panelists will go to “justify” an expansion beyond the actual text of the UDRP when doing so in favor of complainants. I rarely see this when the issue might favor the respondent. This $40-issue is yet another example. While it is possible that $40.00 was more than the out-of-pocket costs, the rule in this regard is tied to the concept of targeting and registering domain names for the purpose of holding them ransom to a known trademark holder. This case fails the mark by any stretch and by even mentioning the issue Mr. Atkinson opens both himself and the UDRP process to ridicule.

Yet again showing his preference for complainants, Mr. Atkinson finds bad faith registration based upon PPC use with websites that “have featured pay-per-click links, some relating to Complainant’s competitors and some being simply generic” and some that “displayed information about Complainant“. Mr. Atkinson thus finds that the respondent must have registered the domain “to attract consumers and create confusion for its own profit“. This is lumped together with the $40-issue to support a finding of bad faith.

It is telling that the only reference to “generic” was in the Complainant’s allegations. The panelist certainly does not mention the word or deal at all with the descriptive nature of the phrase at issue. The use of a descriptive domain for descriptive purposes has repeatedly been found both legitimate and in good faith. It has long been held that the foundational issue is whether the respondent “targeted” the complainant. Here, the Complainant had no trademark in “Hardware Resources”. The domain was used for – guess what – PPC links related to items long considered to be hardware-related. That Complainant may have appeared in any of the PPC links is the fault of the Complainant who voluntarily selected a less-than-stellar trademark.

The most important lesson to be learned here, however, is not that Mr. Atkinson should abstain from being involved in the UDRP process. The important lesson is that decisions such as these destroy the carefully structured balance of the UDRP process as a whole. Respondents are repeatedly told that they can legitimately register and use domain names for descriptive purposes. It instills little confidence in the “system” when panelists such as Mr. Atkinson issue ill-thought out opinions such as this one.

While panelists aren’t earning the salaries of bankers in New York, this case shows that 20 seconds of thought would have produced the correct result. Trademark disclaimers are there for a reason; without the disclaimer the USPTO would not have issued the registration. It defies logic to permit a registration with a disclaimer and then support a trademark in only what has been disclaimed. Complainants must be held responsible for selecting descriptive trademarks. After all, they do it for a reason – a descriptive mark gives them a leg-up on the competition. If a consumer is looking for “hardware”, coming across a sign for “hardware resources” leads to the assumption that one will indeed find hardware items there. However, having selected such descriptive marks they should not be permitted to use them as a sword to prevent others from doing so.

And, $40 for a domain name? I am not sure who was being sillier; the panelist in using this as bad faith or the respondent who thought it was a good idea to make the offer.

• The Domain was suspended on February 15th, 2012
• JotForm asked their users to switch their form integrations from JotForm.com to Jotform.net
• The company operating JetForm (Interlogy Internet Technologies) switched their other domains from Go Daddy to Namecheap and Hover.
• The nameservers were switched back at Feb 16th 5pm EST
• 2 million user generated forms by hundreds of thousand of users were affected by the take down
• Interlogy Internet Technologies has yet to receive an explanation for the shutdown of the site

Last year the ICE seized mooo.com, which runs a free DNS service, and shut down 84,000 subdomains for two days while they were targeting a single site within the network.

[via Wired]

(c) 2012 DomainNameNews.com (9)

Buy your .CO
It’s where big ideas belong

The domain spamming appears to be increasing as new drop-catching services, email out domain names that may have some correlation to a domain name that the recipient of the email owns.  Companies like Intrust Domains have been soliciting people to “express interest” in a domain that Intrust then attempts to acquire.  I’m sure that anyone with a portfolio of even a handful of names has likely seen an email from one of these companies.  Clearly these spams have worked a reasonable rate of success or there wouldn’t be an increasing number of companies doing the same thing.

The sender of these emails tend to either be

Domain Opportunity which includes the address :
Backorder Division
200 E Colfax Ave # 100
Denver, CO 80203

Domain Inquiry
Marketing Development Team
111 N Canal St Suite 1890
Chicago, IL 60606

Domain Alert
The Domain Team
25 First Street, 2nd Floor
Cambridge MA 02141

Available Domain
The Domain Team
25 First Street, 2nd Floor
Cambridge MA 02141

I suspect that these are all the same group. Each email is formatted similarly and contains an opt-out at the bottom. Additionally all 3 senders above uses a link to an obscure domain name. For example http://cellsearches.com/4215015mepafu-KLY , which at the time of this writing and in all cases links to NameBind.com

Another increasing form of domain spamming comes in the form of “new” sales letters. In a similar fashion to the expiring domain spam, these “marketers” tend to email domains that they have in some way deemed related to a domain you may own, at least that’s the story I’ve been given.

As an example, in the last 5 days I’ve received over a dozen an emails about “High SEO” domains such as thehaj.org, lacieheart.com, golfstandbags.com, smallbusinessservices.net and zipbags.com from “Robert Parker” robertparker.tm@gmail.com or “ADAM SMITH” adamsmith.tm@gmail.com, Michael Thomas thomasmichael.tm@gmail.com and ”George Hunt” georgehunt.dn@gmail.com, who happen to have the same phone number : +91.939.277.4412

When I emailed and asked where they got my email address, they informed me “My email program found your email address from the whois data of similar domains.”   There’s no telling what “similar” domains means.

I’m all in favor of receiving an email about a domain opportunity that I might be interested in and I’ve been inclined to send out the occasional email about a domain I’m selling.  I’d like to think that these emails would be highly targeted to the recipient and may even be coming from tools like Estibot’s lead generation tool, but the recent ones I’ve been flooded with seem far too obscure and untargetted to be sourced via this tool.

This new breed of “domainer” seems to pay no mind to who they are emailing or why. The pitches are canned and automated at best, some containing the mistakes of non-native English speakers. Rather than sending out a targeted message, it seems domain spammers, like those spamming prescription medicine offerings, find it much easier to flood every possible in-box with their ridiculous pitches.  I suspect that much of the email harvesting that these spammers do comes from checking the new whois information of sold domains harvested via DNJournal.com or Namebio.com.

All signs indicate that there’ll be an increase in these emails in the coming year. Unfortunately, the results of this will likely also increase the number of domains bought under privacy as well as the number of domain sales that go unreported.

What do you think about this issue?

(c) 2011 DomainNameNews.com (1)

As reported by Tech:Blorge today, German pharmaceutical giant Merck is suing Facebook in a New York Court (reported by WSJ) to demand details as to why Facebook will not allow them to use the “facebook.com/merck” username for their Facebook page.

According to Tech:Blorge, “The German firm came first, while the US firm was created using American assets surrendered by the German firm during the first world war. To minimize confusion and to avoid trademark disputes, the German firm is known as EMD Chemicals in North America, while the US firm is known as Merck Sharp & Dohme outside of North America.”

The German company says it cut a deal with Facebook last year allowing them exclusive rights to the address but has failed to follow through (BBC).

What do you think, do we need UDRP-like rules for social media URLs?

[via Tech:Blorge]

(c) 2011 DomainNameNews.com (5)

On March 2, 2009, NCR and Blockbuster signed a license agreement regarding the domain right to the Blockbuster name for a nascent kiosk business venture. After Dish acquired Blockbuster stores and related brand rights from bankrupt Blockbuster Inc., it has sought to terminate the (“executory”) license agreement with NCR Corp.

[...]

“As of the petition date in these chapter 11 cases, the domain assignment was not an executory contract, and hence cannot be assumed or rejected under the bankruptcy code,” NCR wrote in the motion.

The listed defendants are:

• Cyber2Media, Inc.
• Daniel Negari
• Cleanser Products
• Counter Balance Enterprises Ltd.
• FB Promotions/Freebie Promos
• Mackrooner Ltd. Inc.
• Newgate Services Ltd.
• Pioneer Enterprises Ltd.
• Rabbit Gogo Media LLC
• SMTM Enterprises Ltd.
• YourTick
• Zilt
• Jacob Daniels
• Jerry Hui
• Ryan Johnson
• Eric Jordan
• Karrie-Lee Karreman
• June Kimchi
• Tim Meyers
• Ankit Pandey
• S. Pace
• Elise Petri
• Mark Risi
• John Souza
• Michael Suggs
• and John/Jane Does 1-119

This topic was also covered by Elliot Silver and Bill Hartzer. Hat tip to Domain Trader.