by Karen Bernstein

Have UDRP panels gone too far by setting a new standard for determining the identical or confusingly similar element in domain disputes?

In his November 13 article, Andrew Allemann reported a WIPO decision denying transfer of Project.Me (project.me GmbH v. Lin, Case No. DME2009-0008 (WIPO Nov. 11, 2009)). This article picks up where he left off.

In Lin, an Iphone app developer who owns a German trademark registration for PROJECT ME brought a WIPO domain dispute proceeding against a domainer who registered Project.Me during the .Me landrush. The case was decided by a three-member WIPO Panel. In analyzing the first prong of the ICANN Policy governing domain disputes – whether the trademarked name and the disputed domain name are identical or confusingly similar – the Panel departed radically from well-established procedure in its decision. It compared the trademarked name with the entire domain name, including the ccTLD. Indeed, the Panel’s rationale for this radical approach was based on .Me’s own sales literature, which encouraged users to capitalize on the .Me extension with “catchy” domain names like Contact.Me, Drive.Me or Fly.Me. This rogue UDRP Panel actually went outside of the submitted written papers in analyzing the first prong of the ICANN Policy but then again there is nothing in the ICANN Policy prohibiting them from doing so. The WIPO panel qualified its new approach by stating that it could not “ignore the commercial reality that, in the .me domain name space, the ccTLD identifier is likely to be a key part of a domain name” and that “in appropriate cases [a decision may] be based on a consideration of the domain name as a whole – that is, of the domain name including the ‘.me’ suffix.” What the Panel meant by “appropriate cases” is a very broad term subject to an individual Panelist’s interpretation and is of great concern here.

In addition, what is so disturbing about this decision is that the Panel took the completely opposite approach of how previous UDRP panels analyze the identical/confusingly similar element in a domain dispute. Even US trademark law does not consider the TLD and/or ccTLD as capable of functioning as a trademark and UDRP Panels should not either. When considering whether a trade name is capable of functioning as a trademark US trademark law looks to the “left” of the dot.

So what does this all mean for the domainer? We all know that Domain investors spend their hard earned money on domain names and some hire trademark lawyers to perform trademark searches before buying domain names to make sure they are not going to be faced with paying their lawyer more money to defend domain disputes or trademark infringement lawsuits. The WIPO Panel in the Project.Me case has now made things much more complicated.

This decision could open the floodgates to future UDRP panels and opportunistic trademark holders and their lawyers using the same analysis against the domainer to prove a domain name is identical or confusingly similar. Will it now be easier for a trademark holder to win a domain dispute because a domainer registered, for example, Insure.Me? I can think of numerous instances where one could find the trademarked name and the domain name to appear to be identical by including the TLD or ccTLD in the analysis. The lesson to be learned here is that after the Project.Me decision, it would be most wise before considering investing money into the next great domain to consider the meaning of it by including its TLD or ccTLD extension. I know that after reading the WIPO decision my trademark clearance search analysis has now changed. We will have to wait and see if other panelists take the same approach under similar circumstances.

Karen Bernstein is an attorney based in Manhattan whose practice focuses on trademark, copyright, and e-commerce issues. She may be reached at (212) 339-9955 or kjb (at) karenbernsteinlaw.com.

Two business competitions coming to DOMAINfest conference.

Oversee.net wants to know, “what would you do to develop Planners.com?”

That’s just one of ten domain names contestants in DOMAINfest Global’s LAUNCHfest can submit a development plan for. Contestants submit a plan for developing one of the domain names, and pitch it to a panel of expert judges during the January contest. The winner will get to go through with their plans by leasing or buying the domain name. If they opt to lease the domain, they won’t have to pay for the first year of lease payments.

DOMAINfest will also feature PITCHfest, where entrepreneurs can present their innovative product to a panel of judges and show attendees. This is a great way for any company releasing a new internet marketing or domain product to get an early boost. It reminds me of the popular DEMO and TechCrunch 50 conferences. A winner will be selected by the judges and audience using real time text message voting.

The conference included a similar program at its January 2007 conference called FastPitch.

Three hackers indicted for hijacking domain name.

An indictment against three hackers involved in hijacking the Comcast.net domain name last year shows how easy it is to pull it off: just get access to the administrative contact’s email address.

The U.S. government has charged three hackers with doing just that, and using the email address to change the nameservers on Comcast.net at domain name registrar Network Solutions.

Blame the hackers, but also Comcast for not having security measures in place with their registrar. Moniker, Fabulous, and GoDaddy each have optional security tools available that make it harder to make changes to DNS.

If I were a registrar, I’d offer a gold standard security measure to big companies for critical domains. It would be expensive — something like $10,000 a year — but would guarantee that incidents like this don’t happen.

In order to make any change to the DNS or ownership of a domain, a representative of the registrar would literally fly to the headquarters of the company to meet in person. Over the top? I don’t think so. If I were the CTO of a Fortune 500 company, I’d gladly pay this amount as an insurance policy.

Quinstreet files to go public.

Lead generation company Quinstreet, which bought the Insure.com web site for $16 million in October, has filed for it initial public offering.

In its S-1 Securities and Exchange Commission filing for the IPO, the company reported fiscal year 2009 revenue of $261 million with a net income of $17 million.

Quinstreet notes little about the Insure.com acquisition in its S-1:

In October 2009, the Company acquired the website business of Insure.com, a Nebraska-based online marketing company, in exchange for $15 million in cash paid upon closing of the acquisition and a $1 million non-interest-bearing, unsecured promissory note.

The insure.com transaction is one of nearly a hundred acquisitions the company has made over the past two years, and the company isn’t stopping there:

Our growth over the past several years is in significant part due to the large number of acquisitions we have completed. Since the beginning of fiscal year 2007, we have completed over 100 acquisitions of third-party website publishing businesses and other businesses that are complementary to our own for an aggregate purchase price of approximately $189.5 million. We intend to pursue acquisitions of complementary businesses and technologies to expand our capabilities, client base and media.

The company plans to list on NASDAQ under the symbol QNST.

New web site from Domaining.com is very promising.

Domaining.com founder Francois Carrillo works relentlessly to introduce new products. I like some more than others. Today I think he’s hit a grand slam with BargainDomains.com.

The premise is simple: you can list your domains for sale on BargainDomains.com for a maximum of 30% of the appraisal price on sister site Valuate.com.

When you take a look at the list of domains on BargainDomains.com, you’ll see that this model will actually work. There are some domains on there at very fair prices. True bargains. Not those elusive “great prices” for “premium domains” that you see everywhere else. There are actually some winners on here.

And, as with all great solutions, the beauty is because of the simplicity.

To list a domain, you just plug it into a submit box. It then tells you the Valuate.com valuation and how much you can list the domain for. Then pick a start date, and everything else is taken care of. Listings are exclusive for 15 days and there’s a 15% sales commission (no listing fee.)

Another beautiful but simple feature: domains discounted the most from their appraisal prices are shown higher on the page.

This web site is one to follow.