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March 19, 2009, Vol. 10 No. 03

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Peaches Uniforms Inc. v. 24-7 Outdoors Inc. 

Bill Proposal Could Force Internet Users to Keep User Records 

European Commission Agrees to Online Safety Deal 

Data Scams in High Gear as Markets Tumble


Deb Shops, Inc. v. M S

Complainant, Deb Shops, Inc. and D.B. Royalty, Inc., brought a UDRP claim against Respondent for the <>, <>,<>, and <> domain names. Complainant registered its DEB mark (Reg. No. 1,003,568 issued January 28, 1975) with the United States Patent and Trademark Office (“USPTO”). Respondent argued that the disputed domain names contained generic terms. Complainant maintained that Respondent was using the disputed domain names to direct Internet users to competing commercial websites. The Panel found Respondent’s use of the disputed domain names did not establish rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii) and was evidence of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). Therefore the Panel transferred the disputed domain names to Complainant. Deb Shops, Inc. v. M S, FA 1239510 (Nat. Arb. Forum Feb. 17 2009).

Peaches Uniforms Inc. v. 24-7 Outdoors Inc.

Complainant, Peaches Uniforms Inc., brought a UDRP claim against Respondent for the <> domain name. Complainant had rights in its PEACHES mark dating back to June 6, 2006 as a result of its United States Patent and Trademark Office (“USPTO”) registration (Reg. Nos. 3,223,701 and 3,223,702 issued April 3, 2007). Complainant also claimed common law rights in the PEACHES mark; however, the Panel found that its exhibits did not support a finding of common law rights. Respondent registered the disputed domain name in 1995. The Panel found that because “peaches” is a descriptive or generic term, and Respondent did not appear to be targeting Complainant upon registration, that Respondent had not acted in bad faith under Policy ¶ 4(a)(iii). Therefore, the Panel declined to transfer the disputed domain name. Peaches Uniforms, Inc. v. 24-7 Outdoors Inc., FA 1238992 (Nat. Arb. Forum Feb. 9, 2009).

NetApp, Inc. v. Linett

Complainant, NetApp, Inc., brought a UDRP claim against Respondent for the <> domain name. Respondent asserted that the term “netapp” is an established acronym for “network application.” The Panel, however, found that Respondent’s evidence – an extract from the Free Dictionary Online that associates the acronym with Complainant’s name – was not sufficient to establish the term is commonly used. Therefore, the Panel found that Complainant had satisfied the requirements under the Policy and transferred the disputed domain name. NetApp, Inc. c. Linett, FA 1238829 (Nat. Arb. Forum Feb. 5, 2009).

L.F.P., Inc. v. Domain Contact

Complainant brought a UDRP claim against Respondent for the <> domain name. The Panel found that Complainant had rights in its BARELY LEGAL mark, through its United States Patent and Trademark Office (“USPTO”) registration. Respondent alleged the disputed domain name is comprised of common, generic terms. The Panel found that the Respondent was using the disputed domain name to compete with Complainant’s services, and consequently found Respondent had no rights or legitimate interests under Policy ¶ 4(a)(ii) and had acted in bad faith under Policy ¶ 4(a)(iii). Therefore, the Panel transferred the disputed domain name. L.F.P., Inc. v. Domain Contact, FA 1238666 (Nat. Arb. Forum Feb. 6, 2009).

Disney Enterprises, Inc. v. HB Concepts LLC

Complainant, Disney Enterprises, Inc., brought a UDRP claim against Respondent for the <> domain name. The Panel found that Complainant had established rights in its DISNEY mark and that the disputed domain name was confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). Respondent contended “disneyworld” had taken on a generic meaning as a location, which referred to where Respondent’s rental property was located. The Panel, however, found that Respondent did not provide evidence to support those contentions and found that Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) had been met. Therefore, the Panel transferred the disputed domain name to Complainant. Disney Enters., Inc. v. HB Concepts LLC, FA 1241904 (Nat. Arb. Forum Feb. 16, 2009).


Bill Proposal Could Force Internet Users to Keep User Records

Two recently introduced bills in both the U.S. House and Senate could force Internet service providers (“ISPs”) to keep records of their uses for up to two years. Senator John Cornyn, a Texas Republican, introduced the S.436 bill in the Senate on February 13, 2009 while Representative Lamar Smith, also a Texas Republican, introduced HR 1076 in the House of Representatives on the same day. Both bills are entitled “Internet Stopping Adults Facilitating the Exploitation of Today’s Youth Act” and attempt to address the same social concern – protecting children online.

The bills, if passed, would require ISPs and additionally, Wi-Fi providers to keep records on users for two years. This requirement, as supporters of the bill argue, would help law enforcement officials help track down users accused of violating child pornography laws. Supporters liken the proposed requirement to phone companies keeping records to aid law enforcement officials in pursuing predators. Upon closer inspection of the bills’ language, though, this proposal would also require home users and small businesses that operate their own wireless network to keep records of users even if the network is password protected. This additional requirement is what has caused privacy advocates to oppose the Act.

Opponents of the bills argue that the proposed measures would unnecessarily put users’ information at risk for theft, fraud, and civil liability. One such group, the Electronic Frontier Foundation (“EFF”), has taken legal steps to stop the government from conducting what it argues would be a domestic spying program. The group argues that requiring ISPs and everyday users to keep records on its users would create a vast aggregation of information easily vulnerable to government abuse and anyone with a subpoena. In addition, EFF argues, it could threaten the privacy and anonymous freedom of speech rights.

In addition to the potentially increased burdens on ISPs and other providers of Internet services, ISPs are now worried about increased liability as well. According to one section of the Act, anyone who “knowingly engages in any conduct the provider knows or has reason to believe facilitates access to, or the possession of, child pornography” will be fined or imprisoned for no longer than ten years. This language could effectively make it a crime to provide such services as email, cloud-computing, and social networking tools because they could be viewed as conduct that facilitates these illegal activities.

However, the concerns expressed by opponents of the Act might not even be necessary to defeat the bills in their tracks. As the bills stand now, only Republicans are pushing these proposals, with no Democratic co-sponsor in either the Senate or the House. Without the bipartisan support in both houses of Congress, the momentum that these bills currently have could very well be short-lived.


President Obama Initiates Review of Online Security, February 10, 2009: On February 9, 2009, President Obama ordered Melissa Hathaway, a leading expert on cyber security issues and Bush administration appointee, to conduct a 60-day review of the nation’s cyber security infrastructure. Obama’s top counterterrorism and homeland security advisor, John Brennan, stressed the importance of cyber security while also stating he was confident legal and privacy-protecting safeguards would be found. The Obama Administration entered office critical of Bush’s cyber security policy, but it is still unclear if the Obama Administration will create a permanent cyber security post reporting directly to the President. Link to Full Story

The European Commission Agrees to Online Safety Deal, February 9, 2009: The European Commission has entered into an agreement with social networking websites, including Facebook, MySpace, and YouTube, to implement safeguards intended to protect children and teens using the sites. Seventeen websites and networks have agreed to adopt the agreement which includes systems enhancing the protection of the privacy of member children and streamlining the process to report abuse. Some of these enhanced safety measures were already in use by these organizations to protect users, but also to protect their own reputations. For example, MySpace revealed the previous week it had identified and removed 90,000 register sex offenders from its social network. Link to Full Story

2008 Proved to be a Costly Year for Data Breaches, February 3, 2009: In 2008, the average amount an organization paid to rebuild their brand image and retain customers after a data breach jumped to $6.6 million—roughly $202 per breached record. This is a slight increase from 2007 when the average cost was $6.3 million and a larger increase from 2006 when the average cost was $4.7 million. The fourth annual study, conducted by the Ponemon Institute, measured direct costs, such as customer services offered after a breach, and indirect costs, such as customer loss. This study and a number of high profile data breaches have pushed a large number of companies into setting up higher quality security measures to prevent the tangible and intangible costs associated with data breaches. Link to Full Story

Data scams have kicked into high gear as markets tumble

USA Today, January 30, 2009: In an effort to take advantage of the current economic uncertainty, cybercriminals have launched a new wave of Internet-based schemes to steal personal data and carry out financial scams, security specialists say. The number of scams which deliver malicious programs rose to 31,000 per day in September 2008. These new scams – often involving online promotions touting fake computer virus protection or get-rich-quick schemes – seem to have coincided with the collapse of the U.S. financial sector. The rise in scams has affected individuals through theft of private information and organizations through attacks on data storehouses. Rising unemployment among IT professionals has some security experts concerned that more will turn to cybercrime. Link to full story



April 16-18, 2009

ABA Business Law Spring Meeting
Vancouver, British Columbia

May 13-15, 2009

AIPLA Spring Meeting
San Diego , California

May 16-20, 2009

INTA Annual Meeting
Seattle, Washington


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