Vol. 6 No. 06         

Thursday June 9, 2005

Legal Decisions...Worldwide



Welcome to Domain-News, a complimentary news service of the National Arbitration Forum. The National Arbitration Forum is one of the world's largest neutral administrators of arbitration services and one of four ICANN-approved providers. We invite you to visit our Web site at www.arbitration-forum.com.


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In This Issue



Sears Brands, LLC v. Zarooni


ICANN Paves the Way for Virtual Redlight District


Not Much to Do in Kids’ Online Domain




Recent Decisions



Wells Fargo & Co. v. Doe


Respondent registered the <wellsfargossl.com> domain name and used it to direct Internet users to a website that featured a replica of Complainant’s website customer log-in page.  The website was used to trick unassuming Wells Fargo customers into providing valuable personal and financial information, a scam that is commonly known as “phishing.”  The Panel found that Respondent’s domain name was confusingly similar to Complainant’s WELLS FARGO mark and that Respondent had engaged in cybersquatting.  Therefore, the Panel ordered Respondent to transfer the domain name registration to Complainant.  Wells Fargo & Co. v. Doe, FA 453727 (Nat. Arb. Forum May 19, 2005)



Superior Growers Supply, Inc. v. Strobel


Complainant holds the registration for the SUPERIOR GROWERS SUPPLY and SGS marks.  Respondent asserted that it registered the <superiorgrower.com> domain name to provide a question and answer site for gardeners and the <sgs-hydroponics.com> domain name for selling specially designed hydroponic systems.  Respondent also argued that its choice of domain names demonstrated its lack of bad faith.  It stated that “if [its] goal was to infringe on [Complainant’s] trademark” it would have purchased <sgshydroponic.com> or <superiorgrowerssupply.com>, both of which were available for purchase at the time of the Response.  The Panel disagreed, and Respondent’s argument backfired: “Respondent actually did purchase domain names strikingly similar to the ones that he concedes would be evidence of the ‘goal’ of infringement.”  Following Respondent’s logic, the Panel concluded that the disputed domain names were similar to Complainant’s marks and, therefore, were registered in bad faith.  Superior Growers Supply, Inc. v. Strobel, FA 452438 (Nat. Arb. Forum May 22, 2005)



Sears Brands, LLC v. Zarooni


Respondent registered the <searstower.net> domain name and used it to direct Internet users to an adult-oriented website that provided a chat platform called “Visit-X.”  Complainant filed a complaint asserting that the domain name was identical to its SEARS TOWER mark and that Respondent had engaged in cybersquatting.  The Panel found that Complainant had rights in the mark and that Respondent was using the domain name to take advantage of the goodwill associated with Complainant’s mark.  Therefore, the Panel found that all elements of the Policy had been satisfied and ordered Respondent to transfer the domain name registration.  Sears Brands, LLC v. Zarooni, FA 465281 (Nat. Arb. Forum June 2, 2005)



Am. Eagle Outfitters, Inc. v. Covanta Corp.


Complainant filed a complaint asserting that Respondent’s <americaneaglestore.com> domain name was confusingly similar to Complainant’s AMERICAN EAGLE OUTFITTERS mark and that Respondent had engaged in cybersquatting.  Respondent contended that the term “American Eagle” was not distinctive of Complainant apart from the entire mark, AMERICAN EAGLE OUTFITTERS, and that Respondent was entitled to use the domain name to provide commercial links to locations where visitors could purchase American Eagle coins and merchandise relating to wild birds.  In finding for Respondent, the Panel stated, “Complainant has failed to establish exclusive rights in the words ‘American Eagle’ apart from Complainant’s mark AMERICAN EAGLE OUTFITTERS for the purposes of satisfying Paragraph 4(a)(i) of the Policy.”  Am. Eagle Outfitters, Inc. v. Covanta Corp., FA 465210 (Nat. Arb. Forum June 3, 2005)



V Secret Catalogue, Inc. v. Click Search


Victoria’s Secret, the well-known women’s lingerie and beauty products company, has its share of admirers.  This time, Victoria’s Secret took its courtier to a UDRP Panel.  Respondent registered the <victoriassecet.com> domain name and referred its traffic to Adult Friend Finder, “an adult-oriented website which bills itself as ‘The World’s Largest SEX and SWINGER Personals site.’”  The Panel took notice of Victoria Secret’s fame and found that Respondent’s efforts to use the domain name for benefit exhibited bad faith.  V Secret Catalogue, Inc. v. Click Search, FA 467053 (Nat. Arb. Forum May 31, 2005)



Dell Inc. v. Innervision Web Solutions


Dell Inc. commenced this action against Innervision Web Solutions, the registrant of the <dellcomputerssuck.com> domain name, claiming that Respondent did not have rights or legitimate interests in the domain name because of Respondent's initial commercial use and subsequent use of the domain name as a non-commercial "gripe site."  Respondent filed a Response claiming that he was making a legitimate, noncommercial and fair use of the domain name to express criticism and commentary pursuant to his First Amendment right to free speech.  The Panel found that Respondent's initial use of the domain name to redirect Internet users to his commercial website until he received the cease and desist letter from Complainant demonstrated that he was not making a legitimate noncommercial or fair use of the domain name and, therefore, his use did not qualify under Policy 4(c)(iii).  Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005).







ICANN Paves the Way for Virtual Red Light District


E-Commerce Times reports that ICANN has recently approved the addition and implementation of the top-level domain “.xxx,” intended for adult websites over the Internet.  The “.xxx” domain will be the third new industry specific domain approved this year, alongside “.jobs” and “.travel.”  The decision to approve the “.xxx” domain comes five years after the idea was initially suggested. 


Sexually explicit websites will be encouraged to move to the new domain, making it easier for people to filter and avoid them.  However, these websites will not be required to move to the new domain.  A spokesperson from ICANN was quoted in a media report as saying, "This will help protect children from exposure to online pornography and also have a positive impact on online adult entertainment through voluntary efforts of the industry."


“The .XXX domain does nothing to alter existing pornography laws. But those operating .XXX domains will be forbidden from using ‘misleading domain names or domain names intended to attract child-pornography consumers,’ among other deceptive and disreputable business practices.” (InformationWeek).


In response, the Family Research Council issued the following statement expressing strong opposition to the new domain: "The new domain would do more harm than good. The '.com' domain has been a cash cow for the porn industry and pornographers will not give it up and remove themselves to the '.xxx' domain. Instead, they will populate the '.xxx' domain and perhaps double the number of porn sites available on the Web.”


The “.xxx” domain may be available as early as fall or winter and will be offered exclusively through a single registrar, ICM Registry Inc. (EarthTimes.org)




In The News



Court Hears Argument Over Falwell Web Domain Name


ABC News (May 26, 2005) A Web site critical of the Rev. Jerry Falwell's views on gays contains constitutionally protected, noncommercial speech and should be allowed to keep its name, a common misspelling for the conservative evangelist, a lawyer for the site owner argued Thursday.


Christopher Lamparello of New York City, who operates fallwell.com, took his case to the 4th U.S. Circuit Court of Appeals seeking to reverse a federal judge's ruling that he violated federal trademark law. 


A lawyer for Falwell maintained Lamparello's use of a variation of the preacher's name bordered on theft. "It's been wrong to steal since Moses came down from the mountain," attorney John H. Midlen Jr. said. 


A federal judge ruled last August the domain name was nearly identical to Falwell's Web site falwell.com and could confuse Web surfers despite a disclaimer noting it is not affiliated with Falwell. 



Freeman Wins Cybersquatter Battle


BBC News (May 11, 2005) Oscar-winning actor Morgan Freeman has won the rights to the internet domain name www.morganfreeman.com.


A United Nations [sic] arbitration panel ordered the transfer to the Oscar-winning star, after he complained it was being misused. 


Freeman, 67, complained the name - registered by the company Mighty LLC - was being used to divert internet traffic to a commercial search engine. 


The actor argued that it suggested he had authorized or sponsored the site. 


Upholding the ruling, arbitrator Peter Nitter said the company - which offered no response to the actor's complaint - was using the domain name "for its commercial benefit to lure internet users to its website".



Independent Inventor Secures Landmark Search Engine Patent


Yahoo News (May 17, 2005) As search engine patent wars have escalated, an independent inventor from Ohio has been advancing the state of the art and filing dozens of patent applications since 1999 regarding his discoveries and technologies.  Earlier today the U.S. Patent and Trademark Office issued U.S. Patent No. 6,895,430 (the ‘430 patent) to Eric Schneider, an Ohio inventor, for a Method and Apparatus for Integrating Resolution Services, Registration Services and Search Services, making it the sixth patent of a growing portfolio of Internet-related patents received by Schneider.


According to Schneider, “The burden has been on the individual to first visit a domain name registration services and initiate a request to find available domain names.  The patent portfolio changes this by providing protection of core technologies developed to assist users with determining domain name availability in response to the initiation of request types other than that of a registration request or availability request.”


For example, one aspect of the ‘430 patent specifies receiving keyword input for a search engine and, in response, providing both search engine results of Web pages, and in addition, providing one or more domain names that may be available for registration relating to those keywords.


According to Chris Varley, Associate Director of NorTech, the Northeast Ohio Technology Coalition, “After trying it, I have found Mr. Schneider’s technology promising and can immediately see how its use saves steps making it easier to find available domain names while at the same time adding value to search engine results.”



Domain Name Speculators See Triple-Digit Returns


FinanceVisor (June 8, 2005) An analysis of domain names that have been resold in the secondary domain name aftermarket since 1996 reveals a average return on investment of 377 percent with the average name being bought and resold in 12.5 months.

"These numbers uncover a golden nugget we always knew was there – there’s lots of money to be made in domain names," Zetetic Analyst Keith Pieper said. "Several people have made million dollar fortunes reselling domain names, but you don’t need millions to speculate in this market."

Zetetic culled its exclusive resale transaction database of over 8,000 domain name secondary market transactions collected from dozens of sources since 1996. They identified and analyzed 74 domain names that had been resold in the secondary market at least once during that period.

The median buy price for a domain name was US$891, which was resold within 8.8 months for US$1,450, resulting in a 83 percent return on investment while the average sale saw 377 percent ROI from an original acquisition price of US$7,493 to sale of US$127,115. The longest holding period before reselling was 4.1 years.



Not Much To Do in Kids’ Online Domain


News.com (June 3, 2005) There’s not much for kids to do in the “online playground” set up by the U.S. government more than two years ago.

They can go bowling with SpongeBob Squarepants at Nick.kids.us, plunk a piano keyboard at Music.kids.us, and learn about mummies at Mummies.kids.us.  There are fun facts about the solar systems at Space.kids.us and motorcycles at Knex.kids.us.

Beyond that there are only sixteen more Web sites in the kids.us Internet domain, a letdown to those who had hoped that it would host enough material so that kids wouldn’t have to navigate the unprotected wilds of the Internet at large. 


“It’s disappointing; I wish it was fully deployed,” said Illinois Republican Rep. John Shimkus, who sponsored the bill that set up the domain in 2002.



Domain Names Near 77M


San Jose Business Journal (June 7, 2005) Be it a dot-com, a dot-net or a dot something, the number of Internet domain names is speeding toward 77 million, according to a report from Verisign Inc., the Mountain View-based domain name registration company.


In all, worldwide domain name registrations reached a record high of 76.9 million domain names in the first quarter of 2005. That represents 8 percent growth over the fourth quarter of 2004 and a 22 percent increase over the first quarter of 2004, says Verisign.


According to the company, over 6.7 million new domain names were registered in all "top level domains" during the first quarter of 2005, marking the highest increase in domain name growth to date.

Key factors contributing to the growth of new domain name registrations include a strengthening global economy, increasing numbers of regular Internet users and the continued growth in online advertising, according to VeriSign.



Samsung Registers 470 .CN Domains in 2005 to Protect Against Domain Name Hijackers


Interfax China (May 25, 2005) Samsung has registered more than 470 .CN internet domain names during 2005 in an attempt to protect the company from domain name hijackers, a Marketing Manager with CNNIC (China Internet Network Information Center), which administrates the registration of .CN domain names, said.


"Registering these .CN domain names is actually a way for Samsung to protect its brand. It will help protect against the misuse of the company's brand in .CN domain names," the CNNIC official, who wished to remain anonymous, told Interfax. "Because Samsung is a multinational company, domain names have become one of the company's most important brand management strategies."


Multinationals such as BMW, L'Oreal and Coca-cola have all been victims of .CN domain name hijacking. In one recent example, Google was forced to pay $1 million to buy the rights to the <www.google.com.cn> domain name. As a result, many multinationals have begun to protect themselves by registering a number of variations of different .CN domain names, including Panasonic and Volkswagen, in addition to Samsung. Germany's Deutscher Telekom has even registered more than 100 different .CN domain names even though the company has no business operations in China at present, the CNNIC official said.



Air France Wins ‘Sucks’ Domain Name


The Register (June 8, 2005) The domain name AirFranceSucks.com will be transferred to Air France. But the airline's victory at arbitration was not without controversy: panelists disagreed about what the word 'sucks' really means to internet users.


The name was registered by Florida-based Virtual Dates Inc. in 1999. It was only in February 2005 that Air France took a claim before the World Intellectual Property Organization (WIPO), alleging cybersquatting. The decision was made on 24th May and published today.


For most of the past six years, Virtual Dates pointed the domain name at a page of ePinions.com, an ad-supported site that rates and invites reader comments on everything from movies and barbecues to office supplies and zoos.


Virtual Dates said AirFranceSucks.com was a freedom of expression site for the registration of complaints or recommendations about the airline. Air France said it was just trying to cash-in on its trademark: this was a commercial entity, not the gripe site of an aggrieved customer.


Decisions on 'sucks' sites have gone both ways trade mark owners in the past. But the current panel's majority view on their similarity to a trade mark is supported by a WIPO report on trends in domain name dispute decisions, published in March. On 'sucks' sites, it agreed that non-fluent English speakers would fail to recognize the negative connotations of the word.




Upcoming events



June 13-24, 2005 INTA presents its Trademark Development and Prosecution: USPTO Website Resources and Tips in various US cities.
June 22-26, 2005 ABA offers its 2005 Summer Intellectual Property Law Conference in San Francisco, CA.
June 30, 2005 Practicing Law Institute presents "Advanced Seminar on Trademark Law 2005," New York, NY
July 11-15, 2005 ICANN Conference in Luxembourg City, Luxembourg
July 25-26, 2005 Practicing Law Institute presents “Understanding Basic Copyright Law & Understanding Basic Trademark Law (Combo) 2005” in San Francisco, CA
August 4-9, 2005 American Bar Association offers its 2005 Annual Meeting in Chicago, IL.


Let the National Arbitration Forum know of your upcoming events for listing in DomainNews.  Send event listing information to:  domain-news@arb-forum.com.


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Note: The information found in this newsletter is designed to provide accurate and authoritative information regarding the subject covered, but is not intended as legal advice.