iEstates.com

John Berryhill, Esq, PHD says that the UDRP panel in the Ron Paul Domain name case got its right.

The decision has garnered a lot of Strong opinions, but Mr. Berryhill who has won more reverse domain name hijacking cases representing domain holders says the panel got it right and says that the UDRP panel that awarded HillaryClinton.com to Hillary Clinton got it wrong:

In a comment left on a post on TheDomains.com to Mr.Berryhill says:

Hillary Clinton was only a wife of the politician…”

IMHO, that case was wrongly decided.   But you don’t correct for a wrong decision by continuing to make wrong decisions.

Mike, the difference between Brad Pitt and Ron Paul is that Brad Pitt is a subject of interest for purely commercial reasons.   Trademark law exists in tension with the First Amendment.  The First Amendment says, “say what you like”.  Trademark law says, “you can’t say certain things in the context of commercial speech.”

Given that the First Amendment’s core purpose is to allow, first and foremost, unfettered political speech, the tension comes to the fore in what are almost always “blended” political and commercial contexts.  Often, nothing falls clearly on one side or the other of a bright line somewhere.

A good case for exploring the topic involves former California Governor Schwarzenegger.  California, as may be expected, has a lot of protections around commercial rights of publicity.  But Mr. Schwarzenegger’s career had something of a dual character.  On the one hand, his rights in his name as a commercial brand were substantial.  On the other hand, as a political figure, he was fair game for commentary.

So, what happened is that someone was selling action figures showing Mr. Schwarzenegger as “The Governator”.   The court had a really tough time trying to sort out whether this activity was primarily a political comment playing off the duality of his reputation as a politician and actor, or primarily a commercial enterprise free-riding on the value of the Terminator franchise.  The case is a good read, though.

The UDRP is a bad fit for a lot of “right of publicity” claims in personal names as opposed to purely trademark claims.   Where the line is drawn depends, in a lot of cases, on the particular evidence and arguments in front of the panel.   One way to approach whether a name acts primarily as a “mark” is in the distinction between saying:

1.  “I saw a movie directed by Steven Spielberg.”

2.  “I saw a Steven Spielberg movie.”

In statement 1, “Steven Spielberg” is used as a proper noun – the name of the person who directed the movie.

…

For a second day a UDRP panel has denied the claim of a famous person to their matching .com domain name

Back in February we told you that Joan Collins had filed a UDRP to gain control over JoanCollins.com

Although the ruling has not been published as of yet today, the decision is in and its a loss for Ms. Collins.

As we noted back in February, Ms. Collins full name is Joan Henrietta Collins Gibson.

Joan Collins official site is Joancollins.net.  Ms. Collins sister Jackie, who is also an author, owns the domain name JackieCollins.com

The complaint for JoanCollins.com, was filed with the World Intellectual Property Organization (WIPO).

The domain name is showing an original registration date of 1999 according to DomainTools.com

The domain name appears to be owned since 2007 by a Stephen Gregory of the  Philippines who displays on the whois record of the domain, “”This Domain Name is For Sale””

A quick visit to the domain, clearly indicates that the domain is for sale, as its the only thing on the site, except for an  offer link which goes to an email address at Zerofat.com, which unlike JoanCollins.com is under privacy.…

Arrigo Enterprises, Inc. lost it bid to grab the domain name Arrigo.com away from PortMedia Domains who was  represented by Ari Goldberger of ESQwire.com.

The term Arrigo is a  common Italian surname.

The domain name was owned by the domain holder for 12 years and the Complainants trademark was first registered in 2012.

The panel however declined to make a finding of Reverse Domain Name Hijacking.

 Here are the relevant facts and findings by the three member panel:

Complainant has rights to the ARRIGO mark by way of registration of the mark with the USPTO  (Reg. No. 4,271,171, filed April 15, 2012, registered on Jan. 8, 2013), in association with automobile dealerships, automobile financing, repair or maintenance of automobiles, and the leasing of automobiles. 

Complainant further argues that it has used the mark in commerce since December 1989. 

Complainant asserts that the mark is used specifically in furtherance of Complainant’s automobile dealership in Florida. 

Complainant avers that its dealership is one of the largest Chrysler/Jeep/Dodge dealerships in the United States. 

However, Complainant has not provided evidence to suggest the mark would be known beyond Southern Florida.

Accordingly, the Panel does not consider this account to provide a sufficient basis for secondary meaning in the ARRIGO mark and finds, for the purposes of Policy ¶ 4(a)(i) and the present case, that Complainant’s rights in the mark does not date back to at least December 31, 1989. 

“Complainant asserts that Respondent has used the domain name for almost twelve years as merely a landing page where Internet users are solicited through an array of random hyperlinks. 

“The Panel notes that Complainant does not provide evidence of the content of the disputed domain name, but the Response includes an image purporting to show that the domain name is used to host hyperlinks.

“The Respondent admits to pay-per-click advertising revenues. Respondent argues that its rights are in fact bolstered by the fact that Respondent receives such revenues.  Respondent claims that its advertising services are bona fide, and Respondent is not alone in using hyperlink advertisements on its domain name content pages.” 

“The Panel agrees that the hosting of a hyperlink website can, under the right set of circumstances, constitute a Policy ¶ 4(a)(i) bona fide offering of goods and services.”

“Complainant argues that Respondent has made a thinly veiled attempt to sell this domain name. 

Complainant contends that the domain name’s content page explicitly tells the Internet user: “To purchase this domain name, click here.” 

“Complainant believes that the fact that Respondent is willing to give up ownership to any buyer is evidence that Respondent lacks rights and legitimate interests. 

“Respondent states that its offer to sell this specific common/generic term domain name is in itself a bona fide offering of goods.  Respondent insists that there is no evidence that Respondent ever intended to register and offer the domain name for sale specifically to extort Complainant and its ARRIGO mark.…

In two UDRP decisions that are expected to be published later today, the World Intellectual Property Organization (WIPO) denied Congressman’s Ron Paul, bid to obtain the domain names RonPaul.com and RonPaul.org

The Congressman filed two UDRP’s one for both of the domain name RonPaul.com and RonPaul.org against Whois Privacy Services Pty Ltd / JNR Corp and another UDRP on just the domain name RonPaul.org against  DN Capital Inc., Martha Roberts.

It will be very interesting to read the decision which may include a Reverse Domain Name Hijacking finding as the Congressman’s claim was based on a common law trademark right rather than a registered trademark.

The two cases are D2013-0278 and D2013-0371 and were both filed in February of this year.…

Veko Lightsystems International B.V. was awarded the domain name Veko.com by a one member UDRP panel

The Complainant won the case based off of a Benelux trademark issued February 20, 2002.

A Benelux trademark is about the easiest trademarks to get an usually a jurisdiction someone runs to if they have a weak claim for the trademark especially if they need one in a hurry.

The panel put a lot of weight in its decision on the fact that the domain went to a page of was offered for sale on domainnamesales.com for $25,000 on, the owner of the domain was a domainer and owned over 1,450 domain names and “has a prior history in registering domain names corresponding to the trademarks of others.”

Here are the relevant facts and findings by the one member panel:

“The first question that arises is whether Complainant has a trademark or service mark on which it can rely

“Complainant contends that it is the owner of the VEKO mark, which is used for the following goods and services: switching systems for lighting, lighting, lighting systems, lighting installations, and installation and repair in relation to lighting. ”

“Complainant argues that it is the owner of trademark registrations with the BOIP for the VEKO mark (e.g., Reg. No. 0703059, registered February 20, 2002).

“Complainant also owns trademark registrations with the OHIM for the VEKO mark (Reg. No. 010913655, registered October 10, 2012). “

The Panel notes that although Respondent appears to reside in Korea, Policy ¶ 4(a)(i) and UDRP precedent do not require that Complainant registers its mark in the country in which Respondent resides. ”

Thus, the Panel concludes that Complainant’s registration of the VEKO mark with the BOIP and OHIM sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i)

It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

Respondent has chosen to take Complainant’s VEKO trademark and to use it in its domain name, without making any alteration to its  spelling, thus giving the false impression that it is an official domain name of Complainant that will lead to an official website of Complainant; to resolve to a website promoting lighting and other goods and services, advertised it for sale and offered it to Complainant for sale for $25,000;

Complainant contends that the disputed domain name resolves to a website stating, “THIS PREMIUM DOMAIN NAME MAY BE LISTED FOR SALE, CLICK HERE TO INQUIRE.”

“”VEKO.com may be available for purchase!,” and “Why build a brand when you can buy one?”

Respondent has also offered to sell the disputed domain name to Complainant for an excessive amount of $25,000.”

Thus, the Panel determines that Respondent’s offer to sell the disputed domain on its resolving webpage is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy

First, Complainant argues that Respondent’s attempt to sell the disputed domain name to the generic public and to Complainant for $25,000 is evidence of bad faith registration and use.…

In a case that is sure to drive the trademark holders crazy, Google Inc. just lost a UDRP on the domain name play-gogles.com which was registered in February 2013.

 Google claimed it had rights to the domain name play-gogles.com based off its trademarks for Google and Google Play.

However the one member panel denied Google’s claim even though the domain holder didn’t even bother responding the the UDRP, finding 

“Panel is not persuaded by Complainant’s submissions that the terms are confusingly similar.”

However the panel also found “given the February 2013 registration date of the domain name and the content of the resolving website, more than suggest that Respondent targeted Complainant’s trademark”

“Complainant argues, in short, (i) that the word “play” is descriptive in the context of the goods; (ii) that GOGLE is an obvious misspelling of GOOGLE, and (iii) that merely inverting the terms of a trademark is insufficient to avoid confusing similarity.”

  “What that submission awkwardly sidesteps is the fact that, in English, the word “goggles” (always used in the plural) is a well understood common noun and that GOGLES is (1) a degree of misspelling closer to “goggles” than it is to GOOGLE; (2) is phonetically identical to “goggles”, and (3) when prefaced by the word “play” is given semantic sense and meaning which is altogether absent if GOGLES is interpreted as GOOGLE. “

“For the sake of completeness Panel notes here the evidence relative to the other elements of the Policy (legitimate interests and bad faith) which, given the February 2013 registration date of the domain name and the content of the resolving website, more than suggest that Respondent targeted Complainant’s trademark.  Nevertheless, it has been remarked more than once in former UDRP decisions that a complainant bears an essential obligation to prove confusing similarity under paragraph 4(a)(i) of the Policy independently of other factors.” 

 “Panel finds that Complainant has failed to satisfy the requirements of paragraph 4(a)(i) of the Policy.”
…

The ICANN Board approved the Arab Center for Dispute Resolution (ACDR)  as an UDRP provider.

The approval of ACDR as the first UDRP provider located in the Middle East “enhances ICANN‘s accountability to the Internet community as a whole, enhancing choice for UDRP complainants”.

ICANN acknowledged that comments were submitted suggesting that “ICANN develop contracts with each of its UDRP providers as a means to require uniformity among providers. ”

However the Board stated that “Contracts have never been required of UDRP providers. ”

“On the issue of uniformity among providers, however, the ACDR’s proposal does two things: first, highlighted areas where risk of non-uniform conduct was perceived (such as issues with commencement dates and definitions of writings) have been modified; second, the proposal now includes an affirmative recognition that if ICANN imposes further requirements on providers, the ACDR will follow those requirements; third, the ACDR has revised a specific portion of its Supplemental Rules that was highlighted by commenters as a potential risk to uniformity. This is a positive advancement and helps address concerns of ICANN‘s ability to, in the future, identify areas where uniformity of action is of its obligation to abide by ICANN modifications that could enhance uniformity among providers.”

 …

The domain name Quirk.com just got his with a UDRP.

The domain name is registered to TobyClements.com, LLC however according to the company they don’t own the domain name but changed the ownership to market the domain name.

The domain is still owned by Exotic Design Group which seems to have owned the domain since at least 2005.

There are at least 5 trademark registrations for the generic dictionary word Quirk in the USPTO.

The complaint was filed by the owner of Quirkbooks.com, Book Soup Publishing located Philadelphia.

The domain seems to be a developed site rather than a parked page.

This may wind up being a cautionary tale for those that may transfer ownership of the domain, while still maintaining control.

 …

United Press International, Inc. attempt to grab the domain name upiphoto.com from the United Photographers Internationals of Greece was just denied by a one member UDRP panel to which the domain holder didn’t even respond.

It seems the panel on its own found the domain name which has been used by the domain holder to sell photos since 2008 was barred by the doctrine of Laches.

“Complainant has not claimed Respondent is a sham organization.”

“Respondent has apparently been using the disputed domain name to sell/license photographs since 2008 without complaint…for more than four full years.  During that time, Respondent has undoubtedly acquired rights to the disputed domain name.  Complainant’s late claim is barred by laches.”

 ”Has Respondent infringed upon Complainant’s trademark?  Quite possibly, but that is not the standard for prevailing in a UDRP proceeding.”

“Respondent has rights or legitimate interests in the <upiphoto.com> domain name pursuant to Policy ¶4(a)(ii) so the Panel concludes Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶4(a)(iii).  “

“Did Respondent originally choose its name in 2008 to take advantage of possible confusion with Complainant’s mark?  Quite possibly.  But that is not the standard for proving this element in an UDRP proceeding.”

 …

Demand Media, Inc. (DMD)  just won a UDRP on the domain name TheBulkRegister.com against The Bulk Register of Ontario, Canada and we have our first nominee for our 2013 “Not the Sharpest Tool In the Shed Award.”

Demand Media, Inc. owns the domain name registrars  Enom and BulkRegister.com.

Its a pretty easy win for Demand as it has a trademark for the term BULKREGISTER  based on its registration of the mark with the United States Patent and Trademark Office (“USPTO”) registered May 27, 2003, the Respondent’s failure to submit a response and the fact that the domain holder used BulkRegister.com to register the domain name TheBulkregister.com thereby negating much of any chance to plead lack of knowledge of the trademark holder.

The domain name was registered in July 2011.

“‘Respondent must have had actual knowledge of Complainant’s BULKREGISTER mark at the time Respondent registered the domain name because Respondent remarkably used Complainant’s BULKREGISTER registrar service to register the at-issue domain name.”

“Registering a domain name that one knows is confusingly similar to the trademark of another indicates bad faith registration and use under Policy.”

Yes so far the favorite to win our first annual “Not the Sharpest Tool In the Shed Award.”

 …