From the decision (emphasis added):

Faced with the fact that the Domain Name was registered in 2004, well before the Complainant was formed in 2007, the Complainant argues that the Domain Name was registered in bad faith directed at General Motors, which had announced a concept car called “Evoq” in 1999.

Some members of the Panel are inclined to conclude that, to prove bad faith registration, the Respondent must have had a bad faith intention with respect to the Complainant’s mark. However, the Panel does not need to reach a definitive conclusion on that issue because, even if bad faith directed at third parties could constitute bad faith for the purpose of this requirement, the Panel does not find the existence of any such bad faith on the evidence in this case.

So while the panel clearly thought that the domain owner did not register this domain in order to infringe on the complainant’s brand, at least one panelist thought it may have been infringing on another companies’ brand and thus could potentially constitute a bad faith registration.

In a conversation with DNN, Zak Muscovitch of DNAttorney commented as follows:

Zak Muscovitch at DomainConvergence

The Complainant’s position is absurd. The Complainant argues that the Respondent should be found to have registered the domain name in bad faith, even though the Complainant wasn’t even in existence at the time the domain name was registered, because the disputed domain name was registered after  an unrelated third party; General Motors, acquired trademark rights. The fact that the Complainant was able to adopt EVOQ as a trade name and trademark for its communications and branding business years after General  Motors acquired trademark rights,  in ostensible “good faith”, means that  the Respondent was equally able to register the domain name in good faith notwithstanding General Motor’s limited rights. What is good for the goose is good for the gander. EVOQ is a name that could lend itself to any number of business endeavours. This is a case of attempted domain name hijacking in my opinion, pure and simple.

[Thank you safesys/DBR]

(c) 2010 DomainNameNews.com

Advertisement
Upcoming Domain Industry Events, Conferences & Auctions

This Messages Appears on the Seized Domains

US Authorities announced today in a press conference held at Disney Studios in Burbank that their new initiative “Operation in Our Sites” seized nine domain names linked to websites that could be used to download pirated content. The initiative partners law-enforcement officials with representatives of the entertainment industry.

“American business is under attack from counterfeiters and pirates,” Immigration and Customs’ Assistant Secretary John Morton said at the press conference. “Internet crooks threaten the U.S. economy on a grand scale.”

Officials said that the seized sites had attracted 6.7 million visitors in a single month.The seized domain names and their registrars were:

• TVShack.net (TodayNic)
• Movies-links.tv (DirectI)
• Filespump.com (DirectI)
• Now-movies.com (GoDaddy)
• PlanetMoviez.com (eNom)
• PirateCity.org (Active 24)
• zml.com (BIZCN)
• NinjaVideo.net (eNom)
• NinjaThis.net (eNom)

Some of the domain names do not resolve, while the majority of them displays the “seized” message shown in a screenshot on the left. Not all of the registrars involved are located in the US.

[via The Wrap]

(c) 2010 DomainNameNews.com

Advertisement
Upcoming Domain Industry Events, Conferences & Auctions

Brady, a former employee of SnapNames improperly bid in certain SnapNames auctions using the bidder alias “Hank Alvarez” or “halvarez”. The company also claims that Brady also embezzled funds from Oversee by refunding himself a share of the purchase price for domain names he won through the SnapNames system.

Oversee is seeking to recover $33 million of dollars from Brady, including punitive damages. The company claims to have been making an effort to settle privately with Brady to recover losses, including the “rebates” sent to SnapNames customers effected by the activity and the funds he embezzled.

Oversee came under attack for the debacle and had faced several class action lawsuits themselves.  All parties involved by the fraudulent behavior had been offered a “rebate” check by the company.

For several months, the company has in good faith attempted to settle privately with Brady to recover its losses, including the rebate fund established by Oversee to address Brady’s activities and the funds he embezzled from Oversee.  Those settlement efforts have been unsuccessful.  According to the company officials “No amount of money, however, could compensate the damage Brady has caused to SnapNames’ and Oversee’s reputation in the marketplace.”

Company officials have sent DNN the following details of the events :

• In October 2009, Oversee discovered an employee, Nelson Brady, using an account under the false name “Hank Alvarez,” engaged in improper bidding activities in domain name auctions on the SnapNames platform.
• Oversee and SnapNames disclosed the situation to its customers and employees in November 2009.  Oversee made available to affected customers a cash rebate in the amount of overpayment, plus 5.22% interest (the highest applicable federal rate during the affected time period), of any amounts paid exceeding what the auction price would have been without employee bidding.
• Since that time, more than 60% of the aggregate rebate amount has been claimed.

Brady’s conduct affected:

5% of auctions since 2005
75% of total impacted auctions were between 2005 and 2007
Less than 1% of SnapNames auctions during this period were won by the employee
The remaining 4% were won by SnapNames clients.
Brady’s bidding affected approximately 1% of SnapNames’ auction revenue during the full period.

(c) 2010 DomainNameNews.com

Advertisement
Upcoming Domain Industry Events, Conferences & Auctions

As Domain Name Wire points out, PETA is known for grabbing headlines by chiming in on hot topics with off the wall suggestions had suggested in a letter that the owners donate the domain to them. Writing on their blog about the donation, they add Mann’s donation to the “Things that nonbelievers thought were never going to happen”.  I’m sure PETA didn’t really see this one coming either.

Mann has stepped up to the plate and said he’d donate his share of the Sex.com domain to PETA on the condition he receives a $50 million tax deduction for the donation.   Sure, why not .  Mann is seeking the IRS to accept HIS appraisal of the domain name at $50 million .  Why his appraisal ?  Well because Mann claims to be the world’s foremost authority on domain values.

The Sex.com domain is caught up in a huge legal tangle as creditors sought to recoup their investment and auction the domain which was set for last week.  ESCOM a company partially controlled by Mann declared bankruptcy shortly before the auction which indefinitely postponed the auction of the domain.  This new little wrinkle should continue to drag things out and complicate the matter even more and bring more mainstream press interest. . . .Good or bad ?

(c) 2010 DomainNameNews.com

Advertisement
Upcoming Domain Industry Events, Conferences & Auctions

The report finds that 10% of all cases were heard by 1 of the 141 panelists, Carolyn Marks Johnson. Marks Johnson is also one of the top 5 panelists (rank 3 with 92.7%) by the percentage of cases where the domains were transferred to the complainant.

Zak Muscovitch, a domain name lawyer and publisher of the report, says “The National Arbitration Forum has provided years of service in trademark and domain name disputes. Greater transparency is required in order to explain the concentration of cases amongst certain panellists. ICANN should revisit the Rules and require that panel appointment is always random. Otherwise, there will be an apprehension of an unfair process amongst some observers and stakeholders who believe that the selection of the panellist is of paramount importance and has a substantial likelihood of affecting the outcome of cases.

Read the full report at DNAttorney.com.

At the same time also significant changes to the UDRP process came into effect at another provider, the Czech Arbitration Court (CAC) – the Fast Track UDRP process. Jim Davies, an IP Consultant and Solicitor (England & Wales) at Wrays Lawyers in Perth, Western Australia writes about the apparent loss of control from ICANN over the UDRP process and providers. According to Davies ICANN should require approval of the new rules/process before it can take effect.

(c) 2010 DomainNameNews.com

Advertisement
Upcoming Domain Industry Events, Conferences & Auctions

The suit also refers to several shell companies that Verizon alleges are operated by the three individuals including NOLDC Inc,  Spiral Matrix, KenyaTech, Speedy Web, Unused Domains, and Belize Domain WHOIS Services Lt.  Verizon alleges that the whois records were falsified.

Besides the overwhelming amount of identities to unwind in this case, the case may be an interesting one to watch in terms of jurisdictional issues as DirectNic Ltd is an offshore based company and other defendant companies and individuals are based in separate jurisdictions. Verizon claims in the filing that the jurisdiction is correct because the companies “conducted systematic and continuous business within Florida as a consolidated group of companies that operate the registrar that uses the domain name directNic.com”

Verizon is seeking the maximum penalties in this case of $100,000 per domain infringement, making the grand total $28,800,000.  Verizon is also asking the court to force the companies to disgorge all profits made from the infringing domains.  In addition Verizon has filed a few interesting exhibits which detail hundreds of other domains that the defendants have registered alleging them to be “serial cybersquatters” possibly opening up the door for more cases like this for the defendants.

Update: An important part of this case I skimmed over in reading the 32 page filing and Andrew points out at DNW is that these “infringing domains” were names that the company took over and monetized after the domains expiration.  They were listed as the registrant  for the period between when the domain names expired and were deleted.  As Andrew points out the case  “could have ramifications for most major domain name registrars and their expired domain parking practices, let alone “coming soon” placeholder pages”

(c) 2010 DomainNameNews.com

Advertisement
Upcoming Domain Industry Events, Conferences & Auctions

Involuntary Chapter 11 Petition Filed Against Escom, LLC – Owner of the Sex.com Domain Name

Woodland Hills, California – Creditors of Escom, LLC (“Escom”) today filed an involuntary Chapter 11 bankruptcy petition against Escom in the United States Bankruptcy Court for the Central District of California (San Fernando Valley Division).

Petitioners took this action to protect their interests and to maximize value for all other creditors and equity holders. The filing will stay the public auction foreclosure proceedings previously scheduled for March 18, 2010, which petitioners believe would have diminished the value of Escom’s assets.

For more information, please contact:

Lawrence Morrison, Esq.

Meister Seelig & Fein LLP

(212) 655-3582

lfm@msf-law.com

The sex.com saga continues.

(c) 2009 DomainNameNews.com

Advertisement
Upcoming Domain Industry Events, Conferences & Auctions

In 2007, the US District Court for the Northern District of California ruled that Zuccarini’s domain names constituted personal property located in California—the site of the domain name registry—and were subject to seizure to satisfy the judgment against Zuccarini.  DSH moved to have a receivership assist in executing the judgment in the Northern District of California.

The Court’s most recent decision clarifies that domains, as intangible property, are located in the Northern District based on the location of Verisign, the registry for the .com domain names. They stated in the decision “we conclude under California law that domain names are located where the registry is located for the purpose of asserting quasi in rem jurisdiction. Although the question is not directly before us, we add that we see no reason why for that purpose domain names are not also located where the relevant registrar is located.”

In case you are new to this whole “domain name thing”,  John Zuccarini was arrested and jailed in 2003 for violating the Truth in Domain Names Act.  Zuccarini had thousands of domain names which were typos of major brands, many of these led the user to adult websites and “mousetrapped” the user into viewing hundreds of sites.  The law makes it a federal crime for “whoever knowingly uses a misleading domain name on the Internet with the intent to deceive a person into viewing material constituting obscenity” and “whoever knowingly uses a misleading domain name on the Internet with the intent to deceive a minor into viewing material that is harmful to minors on the Internet”.  Zuccarini was released in 2005.

(c) 2009 DomainNameNews.com

Advertisement
Upcoming Domain Industry Events, Conferences & Auctions

Failbook.com owner Cristian Castillo claims that he made a mistake framing the Failbooking.com content but was using it to demonstrate what the domain could be used for while attempting to sell it. Based on statistics sent to us by Castillo the domain seems to be generating around 10,000 unique visitors a day. Castillo is still offering the domain name for sale for $50,000.

As a result of  the domain owners actions of framing the content of Failbooking.com, Pet Holdings is claiming cybersquatting, trademark infringement, copyright infringement, unfair competition, and breach of contract.  Castillo clearly has the better domain and one that predates FailBooking.com by 3 years, a domain that PHI likely covets but is unwilling to pay $50,000 to acquire.

It’s unclear why PHI sued first and didn’t file a UDRP or simply send Castillo a cease and desist to stop his actions.  Posts on TechDirt and the current Failbook site indicate Castillo believes that suing and not sending a cease and desist was over the top.   We wonder why they didn’t just go with a UDRP instead. Based on several recent bad UDRP decisions, DNN believes Castillo might be lucky that PHI didn’t go that route.  Actions like this seem to be readily pinned as bad faith in a UDRP proceeding, so he’d have lost the domain.  As far as we know, PHI still has the option to file a UDRP.

Techdirt makes the argument that PHI shouldn’t be bothered and that in fact Failbooking.com benefited from the traffic from the Failbook.com framing of their site, but others clearly don’t see it the same pointing out that the action could confuse users in to thinking one site was the other.  The legal battle seems to have continued in the comments section with both sides making additional arguments. Arm-chairing techies also seem to be chiming in on the issue. Debate centers over whether Castillo’s actions were or were not harming PHI and if the actions were more of a defrauding on potential buyers of the domain.

The case is ongoing and will be interesting to follow and see where this leads.  PHI has offered a settlement which calls for Castillo to pay PHI around $8,000, but it doesn’t appear that he is going to accept that any time soon.

(c) 2009 DomainNameNews.com

Advertisement
Upcoming Domain Industry Events, Conferences & Auctions

Is Chris Bosh a “Cyber-hero” or “Cybersquatter”?

Many domainers are now familiar with the remarkable news item reporting that Toronto Raptors NBA star Chris Bosh won a judgment for $120,000 against a domainer, Luis Zavala (Hoopology.com), for registering ChrisBosh.com. The judgment apparently came down in April, but then Bosh’s lawyers reportedly convinced the judge to order that the domainer’s 800 other mainly sports and celebrity domain names domains be handed over to Chris Bosh as well, since the defendant wasn’t likely to pay the $120,000 judgement that Chris Bosh had obtained in an action under the Anti-Cybersquatting Consumer Protection Act, for cybersquatting.

Bosh’s lawyer reportedly stated, that “the Raptors’ star has no intention of holding onto any of them except his own. He’s not trying to make any money here. He just wants to give these players their names back“.

Accordingly, Chris Bosh sues a guy for cybersquatting and then takes 800 cybersquatted domain names as ‘damages’. Bosh’s lawyers are apparently going to decide for themselves, who deserves the domain names: “We are notifying the world that anyone whose name is on this list that has a legitimate right to the domain name, Chris will transfer it to them for free,” said Brian Heidelberger, one of three lawyers who represented Bosh.” Accordingly, it appears that the Judge may have enabled a sports star and his lawyers to determine ‘who has the rights to particular domain names’. Here is the actual text of the lawyers’ terms for handing over the domain names – a kind of topsy-turvy “para-UDRP” process which is apparently entirely within the discretion of a basketball star and his lawyers:

Chris Bosh and Max Deal offer the return of the domain name free of charge as a courtesy to the celebrity named herein, provided that such person promptly requests the return of such domain name in writing from Max Deal. Domain names will not be returned without a direct written request from an authorized person to Hadi@MaxDealTechnologies.com. Prior to transferring any domain name on this list, Chris Bosh and Max Deal reserve the right to require documentation in their reasonable discretion to support the requester’s rights in the domain name. Domain names on this list may or may not be renewed at Chris Bosh and Max Deal’s sole discretion. Chris Bosh and Max Deal reserve the right to at any time in their sole discretion to delete or cancel domain names on this list. Chris Bosh and Max Deal will not charge any fees for the transfer of domain names on this list. All third party costs relating to transfer of any domain name on this list to an authorized rights holder, including but not limited to transfer fees charged by the requester’s registrar, are the sole responsibility of the party requesting transfer. Chris Bosh and Max Deal make no representations express or implied regarding any domain name on this list. By requesting or accepting the transfer of a domain name, you hereby release Chris Bosh and Max Deal from any and all liabilities in connection therewith.

But who is Max Deal? Max Deal is short for “Max Deal Technologies”, a company reportedly founded by Chris Bosh and partner, Hadi Teheran. According to Bosh’s lawyers’ press release, “Max Deal is a social media company that allows brands to increase their reach“. Certainly using the ‘recovered’ domain names as aforesaid demonstrates an impressive reach, even for an NBA star. This is what Chris Bosh has to say according to the press release:

“I will offer the return of the domain names free of charge, but I’d also love the opportunity to show their owners how Max Deal can help.”

Accordingly, it appears that when someone calls up to ‘get their domain name back’ from Chris Bosh, who is the new owner of the formerly cybersquatted domain names, Bosh will take the opportunity to try to sell them on ‘how they can use the domain names in connection with his social media business’. Furthermore, according to the terms referred to above, Chris Bosh can delete or cancel any domain name in his sole discretion. Accordingly, one had better be careful or the domain name could get dropped and picked up by another cybersquatter.

The question then arises, ‘what happens if Chris Bosh decides to not give back a name because the claimant doesn’t meet his criteria?’ Maybe Bosh takes the position that one of the highschool basketball players or Venezuelan racecar drivers on his list doesn’t have common law trademark rights? Could Bosh be the Respondent in an ICANN UDRP proceeding or ACPA action? The Complainant could argue that Bosh registered the domain names in bad faith and is using them in bad faith because he won’t give them back and registered them with the intention of using them in bad faith as part of his monetization scheme in Max Deal…

Can you imagine if a domainer registered 800 celebrity domain names and his defence was that he would give them back to anyone who convinced him that they were the rightful owner and listened to his pitch that they could do great business together by letting the domainer monetize their name? What would happen to the domainer in a case like that?….

Apparently, this situation has raised the ire of at least one domain name owner. If you visit MaxDeal.com (registered to “Donain [sic] Name for Sale of Staten Island, NY”, and apparently not associated with the MaxDealTechnologies.com web site registered to Bosh’s partner, Hadi Teheran, which is currently down) the site states that it’s slogan is, “MaxDeal.com, Creating an Unfair Advantage for Sports Agents”. Will this be the next target on Bosh’s domain name acquisition spree? Or will it be MaxDeals.com (the plural) currently operated as a jewellery store founded by a Max Beloff in 1933?

According to Bosh’s lawyer, Chris Bosh is a “cyber-hero”. Nevertheless, having become the owner of some 800 domain names ‘belonging’ to someone else, one must wonder whether he has been made into an unwitting cybersquatter.

For more information on domain name law please contact Zak Muscovitch at zak@muscovitch.com and visit http://www.dnattorney.com/

(c) 2009 DomainNameNews.com

Advertisement

European Domain Registration