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Domain Name Wire

  • Another Strange UDRP Decision: MovieInsider.com

    1. BY - Oct 25, 2010
    2. Policy & Law
    3. 11 Comments

    Panelist’s decision doesn’t add up.

    A recent National Arbitration Forum decision for MovieInsider.com has me scratching my head. Is it another case of a cut-and-paste panelist? You decide.

    The complainant owns TheMovieInsider.com and successfully won MovieInsider.com. The complainant argued (in panelist’s words):

    Complainant claims that it has used the THEMOVIEINSIDER.COM mark since July 2, 1999. Complainant registered the themovieinsider.com domain name on September 10, 2000.

    Come again? The complainant was using the mark TheMovieInsider.com for over a year before it registered the domain name?

    Where it gets more confusing is the question of what the registrant of MovieInsider.com was doing with the domain name.

    First, the panelist writes:

    Complainant asserts that Respondent’s disputed domain name resolves to an inactive website. The Panel finds that Respondent’s failure to make an active use of the disputed domain name is not a bona fide offering of goods or services…

    OK, but the very next paragraph reads:

    The disputed domain name resolves to a website that features pay-per-click hyperlinks and advertisements. The Panel finds Respondent’s use of the disputed domain name for the purpose of receiving click-through fees is not a bona fide offering goods or services…

    Then again under the “registration and use in bad faith” header, the first paragraph reads:

    Complainant alleges that Respondent is not making an active use of the disputed domain name…

    And the second paragraph reads:

    Since Respondent receives click-through fees from the links displayed on its resolving website, Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion as to the sponsorship or affiliation with Complainant…

    I’m confused.

    Oh, and MovieInsider.com was registered a couple months before TheMovieInsider.com.

11 Comments
  • Landon White says:

    October 25, 2010 at 10:03 pm

    LEGAL PROFESSION DISGRACE

    These Panelist Hearings should be like a magistrate court
    “good for discovery only” (facts)

    The panelist hearings should not be FINAL till written arguments and review are concluded by a “Real Judge”

    This cut N paste by IN-STAFFERS (INSIDERS?)
    for the LAZY PANELISTS…

    miserlby CONTINUES as a disgrace for the Legal Profession.

  • National Arbitration Forum got paid and that’s what matters.

    Their leaders should be in jail and bankrupt but there’s no justice. Google “National Arbitration Forum credit cards” and you’ll understand how many lives these bastards have ruined:

    “After coming under increasing fire for bias towards major credit-card companies, the nation’s largest arbitration firm involved in adjudicating delinquent credit-card debt has agreed to pull out of the business, Minnesota Attorney General Lori Swanson disclosed on Sunday, July 19.

    The settlement with the National Arbitration Forum comes after the Minnesota AG sued the firm on July 14 for consumer fraud, deceptive trade practices, and false advertising. The civil suit, filed in state district court in Minneapolis, alleged conflicting ties between the NAF and debt-collection law firms that represented major credit-card companies. The suit also alleged that New York hedge fund Accretive LLC owned stakes in such collection law firms and the NAF, sending arbitration business between the two. “

  • The standard character mark “Movie Insider” was registered on the Principal Register on October 30, 2007. It does not belong to the complainant in the UDRP.

  • Philip Corwin says:

    October 25, 2010 at 11:07 pm

    With all due respect, this is not a credible finding:

    “The disputed domain name resolves to a website that features pay-per-click hyperlinks and advertisements. The Panel finds Respondent’s use of the disputed domain name for the purpose of receiving click-through fees is not a bona fide offering goods or services…”

    In the past year two separate ICANN groups have declared that parked domains are not in and of themselves evidence of bad faith use.

    As ICA noted in our March 28, 2010 comment on the Initial Report (IR)of the Registration Abuse Policies Working Group (RAPWG):

    PPC

    We appreciate the IR’s observation that:

    pay‐per‐click advertising is not in and of itself a registration abuse, and that bad‐faith use of trademarks in domain names is a Cybersquatting issue that can be addressed under the UDRP. The abuse of a PPC system for illicit gain is most appropriately addressed by the operator of the PPC advertising network (e.g. Google Adsense).

    It is well known that PPC advertising remains the dominant advertising monetization model for the Internet — and that such advertising remains the major, and in some cases the sole, revenue source for a significant portion of online business models. Further, the recent recommendations of the Special Trademark Issues Work Team (STI-WT; available at http://www.icann.org/en/announcements/announcement-2-17dec09-en.htm ), which were unanimously approved by the GNSO and are now in the course of being implemented by ICANN, provide a registrant safe harbor for non-infringing “parked” PPC domains:

    Sale of traffic (i.e. connecting domain names to parking pages and earning click-per-view revenue) does not in and of itself constitute abuse under the Policy. Such conduct, however, may be abusive in a given case depending on the circumstances of the dispute.

    So there you have it — the working group charged with cracking down on domain registration abuse said that PPC is not a registration abuse, and the consensus rules for the new, tougher rights protection rules at new gTLDs also said that PPC is not in and of itself abusive.

    So where does this panelist get off declaring that parking the page is decisive, when ICANN’s policy making body has recently declared that it is not free-standing evidence of abuse?

    This is why ICANN has to put UDRP providers under contract — and then enforce it

  • When will panelist be held responsible for their decisions? They get paid and thus should use their brain before writing, otherwise we can automate it via random generate which copies and pastes something together.

  • Andrew you should start exposing bad panelists. Its not good enough IMO to simply publish cases without exposing bad apples.

    in this case it was
    The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

  • It is also worth noting that this is the 2nd dispute regarding this domain:

    http://www.udrpsearch.com/index.php?query=Movieinsider.com&search=domain

  • Since the mark is generic and descriptive and the complainant cannot prove ownership of the trademark or common law rights under federal case law, a preliminary injunction should be filed to prevent the transfer. Someone call John Berryhill, Ari Goldberger, or Brett Lewis.

  • It’s not that tough, people. When you register or purchase a generic domain, immediately file for a trademark with the US Patent Office. It’s easy and cheap. I’ve done it twice now.

  • Landon White says:

    October 26, 2010 at 9:03 pm

    @ Philip Corwin

    Good Point,

    (Quote)This is why ICANN has to put UDRP providers under contract — and then enforce it
    (Unquote)

    BUT.. ICANN does not mostly act as an
    Enforcement Agency – how can you change
    that?

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