Your Source for Domain Dispute News and Information Wednesday, January 24, 2007, Vol. 8 No. 01
 

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In This Issue

 

 

June Bug Enterprises, Inc. v. myspecialprice.com

 

Critics Grow as “Domain Tasting” Becomes More Prevalent

 

“.Bank” Has Potential to Foil Phishers

 

Origins of a Manatee Humor Homepage

 

 

 

Recent Decisions

 

 

Audio-Digest Foundation v. Administrative Contact

 

Complainant, Audio-Digest Foundation, initiated a complaint against Respondent, Administrative Contact, regarding Respondent’s <nursedigest.com> domain name. The Panel found that the disputed domain name was confusingly similar to Complainant’s NURSES-DIGEST trademark, which Complainant uses to market continuing medical education courses in audio form. Despite Respondent’s contention that it was not using the disputed domain name for goods and services in competition with Complainant because Respondent does not sell audio materials, the Panel found that both Complainant and Respondent were in the business of educating nurses, and thus Respondent lacked rights and legitimate interests under Policy ¶ 4(a)(ii). The Panel further found bad faith registration and use under Policy ¶ 4(a)(iii), and thus transferred the <nursedigest.com> domain name from Respondent to Complainant. Audio-Digest Foundation v. Administrative Contact, FA 839805 (Nat. Arb. Forum Dec. 28, 2006).

 

 

Hugo Daniel Barbaca Bejinha v. Whois Guard Protected

 

Complainant, Hugo Daniel Barbaca Bejinha, filed a claim under the UDRP against Respondent, Whois Guard Protected, registrant of the <globalchip.org> domain name. Complainant asserted that the disputed domain name was identical to its GLOBALCHIP mark under Policy ¶ 4(a)(i). Complainant asserted common law rights in the mark based on its previous ownership of the disputed domain name, which Complainant contended it utilized for the sale of various gaming products. However, the Panel found that Complainant failed to provide sufficient evidence of secondary meaning associated with the mark such that Complainant would have acquired common law rights in the GLOBALCHIP mark prior to its failure to renew the <globalchip.org> domain name registration. The Panel thus found that Complainant had failed to provide sufficient common law rights in the mark under Policy ¶ 4(a)(i), and accordingly denied to transfer the <globalchip.org> domain name to Complainant. Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006).

 

 

June Bug Enterprises, Inc. v. myspecialprice.com

 

Complainant, June Bug Enterprises, Inc., brought a claim against Respondent, myspecialprice.com, for Respondent’s registration of the <magicjohnsontravelgroup.com> domain name. The Panel found that Complainant had established rights in the MAGIC JOHNSON mark through several trademark registrations with the United States Patent and Trademark Office (“USPTO”) and had also established rights in the MAGIC JOHNSON TRAVEL GROUP mark through three intent-to-use service mark applications with the USPTO, as well as Complainant’s public marketing of the mark. The Panel found that the disputed domain name was confusingly similar to the MAGIC JOHNSON mark and identical to the MAGIC JOHNSON TRAVEL GROUP mark, and thus Complainant satisfied Policy ¶ 4(a)(i). The Panel found that Respondent was using Complainant’s marks to attract Internet users to Respondent’s website for Respondent’s commercial benefit, and thus had no rights or legitimate interests in the <magicjohnsontravelgroup.com> domain name. The Panel also found bad faith registration and use, as Respondent admitted to being aware of Complainant’s marks, and had registered the disputed domain name days after the public announcement of the MAGIC JOHNSON TRAVEL GROUP, which the Panel held constituted opportunistic bad faith. The Panel decided to transfer the disputed domain name from Respondent to Complainant. June Bug Enters., Inc. v. myspecialprice.com, FA 833078 (Nat. Arb. Forum Dec. 27, 2006).

 

 

LD Products, Inc. v. Total Sales USA, Inc.

 

Complainant, LD Products, Inc., commenced an action against Respondent, Total Sales, USA, Inc., for the <fourinkjet.com> domain name. Complainant asserted rights in the 4INKJETS mark, but the Panel found that the disputed domain name was not confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). The Panel found that the difference of deleting the “s” from the end of Complainant’s mark, as well as the difference between “four” and “4,” rendered Respondent’s disputed domain name sufficiently distinct from Complainant’s mark. The Panel further found that Respondent’s offering of toner and inkjet related goods on the website located at the <fourinkjet.com> domain name was a bona fide offering of goods and services and thus Respondent did not register the disputed domain name in bad faith. Having failed to establish the elements as required by the UDRP, the Panel declined to transfer the disputed domain name from Respondent. LD Products, Inc. v. Total Sales USA, Inc., FA 832392 (Dec. 22, 2006).

 

 

Skype Limited v. Jan Jensen

 

Complainant, Skype Limited, filed a claim against Respondent, Jan Jensen, seeking the transfer of the <skype.us> and <skypeshop.us> domain names. The Panel found that Complainant had rights in the SKYPE trademark through registration with the United States Patent and Trademark Office, as well as common law rights through several years of continuous use of the mark. However, regarding the <skype.us> domain name, the Panel found that Respondent’s registration pre-dated Complainant’s use and rights in the mark, and Complainant accordingly failed to meet its burden under Policy ¶ 4(a)(i). In contrast, Complainant established sufficient rights in the SKYPE mark that pre-dated the registration of the <skypeshop.us> domain name, and thus satisfied Policy ¶ 4(a)(i) with regard to that domain name. The Panel continued its analysis of the <skypeshop.us> domain name under Policy ¶ 4(a)(ii), finding Respondent lacked rights and legitimate interests in the disputed domain name, and under Policy ¶ 4(a)(iii) it found bad faith registration and use. Accordingly, the Panel rendered a split decision, denying the transfer of the <skype.us> domain name, but agreeing to the transfer of the <skypeshop.us> domain name. Skype Ltd. v. Jensen, FA 842091 (Nat. Arb. Forum Dec. 26, 2006).

 

 

SmartGene GmbH v. 4You Net Services

 

Complainant, SmartGene GmbH, commenced an action under the UDRP against Respondent, 4You Net Services, in regard to Respondent’s <smartgene.com> domain name registration. The Panel found that the disputed domain name was identical to Complainant’s SMARTGENE mark under Policy ¶ 4(a)(i). Additionally, the Panel found that Respondent had failed to provide evidence that it was commonly known by the disputed domain name, and that Respondent’s failure to make an active use of the <smartgene.com> domain name, as well as Respondent’s offers to sell it, did not give Respondent rights or legitimate interests in the disputed domain name. The Panel also found bad faith registration and use on the part of Respondent, as Respondent had not made an active use of the disputed domain name in over eight years of registration, and had offered to sell the disputed domain name for $55,000, an amount in great excess of out-of-pocket expenses incurred. Accordingly, the Panel ordered the transfer of the <smartgene.com> domain name from Respondent to Complainant. SmartGene GmbH v. 4You Net Services, FA 820359 (Nat. Arb. Forum Dec. 6, 2006).

 

 

 

E-PRACTICE

 

 

Critics Grow as “Domain Tasting” Becomes More Prevalent

 

“Domain tasting” commonly refers to a practice in which domain name registrars use a five-day grace period to test the marketability of domain names without incurring the usual charges from the Registry. Specifically, the registrar can gauge the amount of traffic generated by commonly misspelled domain names, and subsequently delete the ones which are less visited at the end of the grace period in order to avoid registration fees. The five-day grace period is governed by the Internet Corporation for Assigned Names and Numbers (ICANN), which originally created this policy with the intent to provide registrars with a recourse in case a domain name was accidentally misspelled during registration.

 

However, some companies have attacked the policy as inadequate because they claim that the practice of domain tasting goes far beyond its policy’s intentions. Retailers Neiman Marcus and Bergdorf Goodman have alleged in a federal lawsuit that domain name registrar Dotster is using the policy to determine which commonly misspelled domain names are visited most often in order to maximize profits generated from cybersquatting. The lawsuit has yet to be resolved.

 

In response to this growing concern, ICANN adopted an amendment to its .org Registry Agreement with the Public Interest Registry on November 22, 2006 that authorized an excess deletion fee on certain “.org” domain names. Some have applauded ICANN for these efforts, while others have criticized ICANN for the limited scope of this amendment. Some large domain name registrars such as GoDaddy.com, which recently teamed up with Google and eNom to sell addresses ending in “.com,” “.net,” “.biz,” and “.info,” have verbally and in writing called for further change to ICANN’s policy.

 

Approximately 4 million domain names are currently tasted in any given day according to Jay Westerdal, CEO of the domain consultancy firm Name Intelligence, and the practice continues to increase. This issue is likely to remain hotly debated for quite some time.

 

 

 

In The News

 

 

“.Bank” Has Potential to Foil Phishers

 

The Guardian, Dec. 7, 2006: With losses from “phishing” schemes on the rise, experts are calling for top-level domain names such as “.bank” or “.secure” as potential solutions. “Phishing” occurs when Internet users receive an email claiming to be from their bank, or follow a link to a website that appears to be that of their bank, and then fill in personal information including passwords. That information is then used for fraudulent purposes. Domain names are a key tool for those engaged in phishing schemes, since domain names similar to the genuine domain names of banks are readily available. Examples include <barclays-bankcard.co.uk>, <muvisacard.eu> and <hsbcgroupuk.com>, all of which look genuine to many Internet users. Since generic top-level domains such as “.com” and “.net” are easy to register, some experts suggest creating new top-level domains, such as “.bank” or “.secure,” that would be authorized by some sort of oversight organization. Currently, the “.museum” top-level domain operates in this way, requiring applicants to verify their membership in the museum community. For the time being, banks continue to use dispute resolution services to go after infringing domain registrations, but Internet users should be aware that phishing remains a problem and should exercise caution in disseminating personal information. Link to Full Story

 

 

Origins of a Manatee Humor Homepage

 

International Herald Tribune, Dec. 12, 2006: The December 4 installment of the television program “Late Night With Conan O’Brien” included a skit portraying outrageous sports-team mascots, including a joke about the “Webcam manatee,” supposedly the mascot of FSU. While the “Webcam manatee” (someone in a manatee costume) danced provocatively, Conan O’Brien ad-libbed a line mentioning that the manatee was being watched at <hornymanatee.com>. While no such website existed as of the taping of the show, NBC quickly paid $159.00 to purchase the domain name. NBC’s decision to purchase the domain name was motivated by the fear that a viewer might acquire the domain name and put something inappropriate on it, potentially exposing NBC to liability for appearing to promote the website. O’Brien was offered the choice between removing his mention of the domain name or purchasing it and asked that NBC purchase the domain name registration. As it turns out, the website located at the <hornymantee.com> domain name, which O’Brien and his staff helped to create, has received over three million hits since its creation. Viewers have also submitted their own artwork and other material to the website. Link to Full Story

 

 

Island of Misfit Country Codes

 

E-Commerce Times, Dec. 7, 2006: The Internet Corporation for Assigned Names and Numbers (“ICANN”) is seeking public comments on strategies for revoking outdated top-level domains, in particular those assigned to countries that no longer exist. Just as new top-level domains such as “.eu”, “.travel,” and “.asia” are coming into their own, there are questions about how best to deal with top-level domains made obsolete by geo-political change. The Soviet Union’s “.su” is one top-level domain name slated for deletion, and it is not alone. Yugoslavia, having split into Serbia and Montenegro, is transitioning away from the “.yu” country code. Despite these changes, a Google search generates millions of “.su” and .yu” websites. Other obsolete country codes have disappeared, such as East Germany’s “.dd,” while Zaire’s “.zr” was replaced with “.cd” after the country became the Democratic Republic of Congo. Link to Full Story

 

 

Actor DeNiro Claims Trademark Violation

 

New York Post, December 31, 2006: Actor Robert DeNiro has sent a cease-and-desist letter to the owner of the community arts website <tribeca.net>, claiming he owns common-law rights in the TRIBECA mark. DeNiro, who founded the Tribeca Film Festival in 2002, was a co-owner of a restaurant named Tribeca Grill in 1990. Chuck Harris, the registrant of the <tribeca.net> domain name, registered the domain name in 1995 and just recently got the website off the ground. DeNiro’s attorneys are claiming that the TRIBECA name has developed extraordinary secondary meaning and is closely associated with DeNiro’s goods and services. Community members that contribute to the content of the website at the <tribeca.net> domain name claim that DeNiro is being a “bully,” and that the website is a community-driven, “grass-roots” website embodying the “spirit of what Tribeca is supposed to be.” In addition to claiming that the website infringes on his protected trademark, DeNiro is demanding that Harris provide a full accounting of all the revenue generated by the website. Link to Full Story

 

 

Google Launches Domain Name Registration Service

 

TechTree.com, December 18, 2006: Google, the well-known Internet search provider, has launched a domain name registration service called Google Apps For Your Domain (“GAFYD”). Google has partnered with domain name registration companies GoDaddy and eNom to form GAFYD. The company plans to sell registrations for $10 per year, and the service will support “.com,” “.net,” “.org,” “.biz” and “.info” generic top-level domains. Internet sites that register domain names using GAFYD will be automatically positioned to utilize several other Google products, such as Gmail, Google Talk instant messaging, Google Page Creator, and will provide a Start Page for creating a home page. GAFYD seeks to extend Google’s private-label calendar, email, and instant messaging services to more Internet users. Previously, if customers wished to use GAFYD, they would have had to have a domain name. With the launch of the new registration service, Google is expanding to serve customers who do not have a domain name. Link to Full Story

 

 

Domain Name Industry to Receive First Print Magazine

 

DomainNameWire.com, December 28, 2006: Domainer’s Magazine, a new print magazine devoted to the growing domain name industry, will launch its introductory issue in January 2007. There are currently no print publications devoted to the burgeoning industry, and the magazine seeks to fill that void. The magazine will be published bi-monthly and the first issue will be distributed to 5,000 people. The magazine will include regular features such as “Domainer’s Toolbox,” a guide to tools available to assist domainers in day-to-day business activities, “Spotlight,” a chance for leading innovators in the industry to share ideas, “Hardware Review,” a source for reviews of new computer hardware products, “Gadget Corner,” a technology article featuring the magazine’s resident expert reviewing new products, and “Domainer’s Legal,” a feature presenting articles by various attorneys in the field addressing legal issues within the domain name industry. Link to Full Story

 

 

 

Upcoming events

 

 

January 24-27, 2007

American Intellectual Property Law Association’s Mid-Winter Institute

New Orleans, LA

January 26-27, 2007

Cyberspace Law Committee (Business Law Section, American Bar Association) sponsors its annual Winter Working Group meeting

Little Rock, AR

February 9-11, 2007

ABA Intellectual Property Law Section Midwinter Meeting

Miami, Florida

 

 

Let the National Arbitration Forum know of your upcoming events for listing in Domain-News. Send event listing information to: domain-news@adrforum.com. Please type "DOMAIN NEWS EVENTS" in the subject header.

 

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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.