Company sues to keep domain after surprise UDRP decision.

Michael Berken’s company, WorldWide Media, Inc., has sued Traditional Medicinals Inc., in order to retain the domain name SmoothMove.com.

Earlier this month, a National Arbitration Forum panel found that Worldwide Media must transfer its ownership of SmoothMove.com to Traditional Medicinals. Traditional Medicinals offers a laxative tea called Smooth Move.

WorldWide Media, represented by attorney Ari Goldberger, argues that Traditional Medicinals does not have exclusive rights to the term “smooth move” and the domain name was registered without knowledge of any trademark. The company is seeking declaratory relief stating that the domain name does not infringe, does not violate the Anticybersquatting Consumer Protection Act, and is being used legally. The lawsuit also seeks payment of WorldWide Media’s legal fees associated with this case.

Under UDRP guidelines, a transfer of the domain name is not initiated if a lawsuit in the proper jurisdiction is filed within 10 days of the decision.

WorldWide Media’s complaint notes that several other companies have trademarks for “smooth move” covering products such as electronic controls, seasonings, and lingerie. Over 50 businesses in the United States use the term “smooth move” in their business names and there are over 150,000 search results in Google for “smooth move”.

The lawsuit was filed in the Federal Court – Western District of North Carolina. View the complaint here (pdf).

From memorable names to search terms, Austin allergists have good domain names.

A few years ago I wrote about an oral surgeon in Austin with a great domain name – Jawpain.com. Last week I used Google to find an allergist in Austin, and was impressed with the domain names these local doctors were using.

The second result was for Allergy and Asthma Center of Austin, which uses the catchy domain name NoSneezes.com. Allergy and Asthma Consultants uses the keyword domain name AustinAllergy.com. Lake Austin Asthma & Allergy Associates one ups them with AustinAllergies.com, which likely receives more searches than the singular version.

There were also some domain names that I didn’t like. Austin Allergy Associates uses both AustinAllergyAssoc.com and AustinAllergyAssociates.com. Both are long, but I give them credit for thinking to register both an abbreviated version and the long form.

Quick, the whois record for AustinAllergist.com says the domain name is for sale.

Internet Commerce Associations requests investigation of Implementation Recommendation Team.

Internet Commerce Association Counsel Philip Corwin has sent a letter to ICANN’s ombudsman requesting an investigation of Implementation Recommendation Team (IRT). IRT was set up at ICANN’s Mexico meeting to suggest implementation procedures for new top level domain names. It primarily represents trademark interests.

According to the letter, IRT is acting merely as a back door attempt to change the rules of domain arbitration under Uniform Dispute Resolution Policy (UDRP). ICA believes:

The IRT has chosen to operate in a non-transparent manner that unfairly excludes meaningful participation by professional domain name registrants who are most likely to be affected by its recommendations. Further, it is becoming clear that the IRT is in significant part an expedited, backdoor process for proposing and implementing major changes in second level dispute procedures that will undermine and displace the UDRP and thereby substantially diminish the procedural and substantive rights it presently affords to good faith domain registrants. Further, there is a high likelihood that any such changes in dispute procedures implemented in the context of new gTLDs will quite probably migrate in short order to incumbent gTLDs, including .com.

While many companies understand the boundaries of trademark rights, others will surely use this as an opportunity to expand the rights of trademarks and capture generic domain names. For example, Hearst Corporation, publisher of Cosmopolitan magazine, has notified ICANN that it believes it should hold all rights to any second level domain name “Cosmo” or “Cosmopolitan”. These words are generic and can be used for purposes other than the magazine, such as the popular beverage of the same name.

Live domain auction to take place next week at TRAFFIC Silicon Valley.

Rick Latona Auctions has released its list of domain names for next week’s live domain name auction at TRAFFIC Silicon Valley.

The list is definitely weighted toward premium domain names, but includes many quality domain names at $1,000, too. As the company did in its last auction, this auction will also include non-domain lots such as web hosting packages and offshoring packages through Offshoring.com.

After several challenges in the last Rick Latona Auctions live auction, the company made some changes to this one. Most notable is that all auctions will start at their reserve price.

The highest priced domain is SavingsBonds.com at $1.5 M. (The best investment I made this decade was savings bonds I bought in 2000 and 2001 that are currently earning over 8% interest. But it’s not enough money to buy the domain name.)

The auction also includes Shows.com, which will be auctioned with no reserve.

The auction will take place Tuesday, April 28, 2009 from 3:30pm to 6:00pm PDT. Online bidding is available at
www.proxibid.com/ricklatona.

Verizon has several recommendations for ICANN — including listening to the recommendations it has already received.

I’ve read dozens of comments submitted to ICANN about its new top level domain name applicant guidebook. Perhaps the most thoughtful comments in the latest round were from Verizon (NYSE: VZ), which is known in the domain community for aggressively pursuing cybersquatters. You can read Verizon’s comments here (pdf).

I talked to Verizon Vice President and Associate General Counsel Sarah Deutsch yesterday to see what the company thinks ICANN should do before moving forward with its rollout of new gTLDs. Even in its primary role as a trademark owner, it shares many of the same concerns that other internet constituents have.

Verizon is disappointed that ICANN is pushing forward with the new gTLD process in the face of so many comments and threshold concerns. “We hoped they would have delayed [the process] after getting the first round of comments,” said Deutsch. “Rather than take stock of hundreds of comments they received, rather than slowing the process down, they just released another version of the guidebook.”

The company is in a unique position to evaluate new mechanisms for handling domain disputes and required checks and balances because it played a part in shaping the Digital Millennium Copyright Act. Verizon isn’t just a trademark and copyright holder, it’s also an ISP. Therefore, it has had to deal with the consequences of DMCA from both sides: as an ISP and a rights holder.

One of the company’s suggestions is to create an expedited suspension mechanism for domain names that infringe trademarks. As a result of Verizon’s experience with DMCA, it has ideas about how this could be structured to minimize abuse. Among other checks and balances, a domain subject to the equivalent of a “take down notice” would not be turned off. The domain would just be locked from transfer pending the outcome of a dispute resolution similar to UDRP.

Verizon also supports a “loser pays” model to keep companies from filing frivolous suspension requests. It also suggests that trademark owners that wrongfully use the suspension process might be barred from using it in the future. (There is currently no penalty under UDRP for a complainant that is found guilty of misusing the UDRP proceedings.)

The company believes a so-called “white list” of reserved domain names should also be considered. If “Verizon” were on this list, for example, then no entity other than Verizon could register the second level or first level domain for the keyword.

Many domain name owners are concerned about the white list concept because trademark holders might try to assert rights to generic terms. For example, Hearst is also in favor of a white list and wants the generic term “Cosmopolitan” reserved against all possible uses.

Deutsch thinks that a properly designed expedited suspension system could negate the need for a white list. She also said “There would have to be strong hurdles to get on the reserved names list.” One of those hurdles would be proving that the brand has been subject to cybersquatting in the past.

Although some of Verizon’s suggestions may worry domain name owners because of the potential for abuse by trademark holders, some recommendations are shared with other ICANN constituents such as domainers. For example, Verizon wants price caps on TLD operators, and cites the equitable treatment clause in Verisign’s registry agreement as reason for concern. Surprisingly few companies have raised this issue with ICANN, perhaps because they aren’t aware of it. “We were very shocked to learn about the equitable treatment clause,” said Deutsch.

As one of the United States’ biggest brands, Verizon has spent considerable time and money defending against cybersquatters.

Apparently it’s working. The company has seen a decrease in cybersquatting activity of its brands because of its publicized legal actions. Deutsch claimed Verizon will get an additional nine million visitors to its web site this year from domain names it has reclaimed through its enforcement actions.

But the company is worried a slew of new top level domains will bring it back to square one.