Panel points out the perils of descriptive marks.

Marchex has successfully defended a UDRP case brought against its domain name Walkaway.com with the help of domain name attorney John Berryhill.

Complainant Walkaway Canada Incorporated is the company behind the Hyundai Assurance program. The program allowed new car buyers the opportunity to return their car and walk away from the loan in the event of a certain life event such as a job loss. It was offered during the depths of the recession when people were scared to buy cars because they might lose their job.

Marchex argued that the pay-per-click page at Walkaway.com included topics related to the descriptive nature of the term, such as to walk away from a home mortgage.

The panel agreed, writing:

Even if it is true that the ads in Respondent’s website are related to Complainant’s services, that is a problem of Complainant’s making. Having selected a descriptive term as its mark, Complainant must suffer the consequences, including the fair descriptive use of its mark by other parties.

Walkaway’s domain name is WalkawayProtection.com.

Real estate firm sues owner of .co.

The owner of a .com domain name has filed a lawsuit (pdf) to get the .co version of their domain name. This is the first such .co federal anticybersquatting lawsuit I’m aware of (although there have been plenty of UDRPs and I don’t think a complainant has lost yet).

Real estate company Sibcy Cline filed the in rem lawsuit against SibcyCline.co.

The firm registered both SibcyCline.com and Sibcy.com way back in 1995. But someone else registered the .co domain name in July last year.

Sibcy Cline sent a couple cease and desist letters to the registrant, who finally responded by saying he’d sell the domain name for $1,500. Sibcy Cline rejected the offer, only to find that the domain name was transferred to another registrant shortly thereafter.

The lawsuit seeks transfer of the domain name.

Group to help set policy for new .xxx domain name.

One of the interesting quirks about the new .xxx domain name is that it will help fund a group called International Foundation for Online Responsibility (IFFOR).

IFFOR will get $10 from every domain registration in order to initiate “a series of policies for responsible business practices and conduct within the .XXX online adult-entertainment community”.

Today the group sent out a press release formally announcing the members of the IFFOR board as well as initial members of its Policy Council.

Board members include:

Stuart Lawley – CEO of ICM Registry, which is running .xxx
Clyde Beattie – CEO of Yorkland Investment Corp
Sebastien Bachollet, CEO of BBS Consulting and a member of the Board of Directors of ICANN

Policy Council members include:

Fred Cate – Professor of Law at the Indiana University School of Law-Bloomington and director of the Indiana University Center for Applied Cybersecurity Research

Bob Corn-Revere, Partner at Davis Wright Tremain

Nadine Strossen – Served as president of ACLU from 1991 through 2008

Five more Policy Council members will be announced within the next couple months.

Government action and lawsuits could slow down new TLD rollout.

So ICANN has approved the new top level domain name program and set out the timeline.

Full steam ahead?

There are two possible forces that could slow this down.

One would be some sort of government action. Governments aren’t happy, and there’s that looming IANA contract expiration coming up later this year. The U.S. could use it to force concessions.

As I’ve noted before, any delay in new TLDs brought on by government pressure is likely to be bad for domainers. It only means heavy-handed trademark restrictions that could potentially harm legitimate domainers.

ICANN is still looking in to competition issues with allowing registries to own registrars and vice-versa. This is a probable target for antitrust authorities if ICANN doesn’t bend it.

Another potential hiccup would be a lawsuit by a trademark interest with a request for an injunction. The Olympics have already threatened to sue, and you can be sure other groups want special protections with new TLDs.

But haven’t they had a chance to complain be part of the process already? Sure, if they pay attention to internet governance.

As new TLDs move closer to reality and ICANN starts marketing the opportunity, you can bet a number of people will be peeved.

The question is what, if anything, they choose to do about it.

Company acquires Listen.in domain name.

Google has made a curious domain acquisition — Listen.in.

Technically it’s an Indian country code domain name, so perhaps we should just ignore the obvious phrase “Listen In”.

But it’s more fun if you don’t ignore it.

What’s Google up to? The company does have a product called Google Listen that’s in Google Labs. Oh, and there were those apparent plans to “listen in” to your computing environment.

Of course there’s the new Google music service as well, and this would be a nifty name for it when it rolls out generally.

Still, I find it hard to believe the company would bank a new product on a local ccTLD like .in. The company hasn’t been big on buying generic or even “cute” domains like this in the past.

Listen.in used to be a social music service based in Canada.

What do you think?

[Update: see comments, Ross says the got this domain when they acquired PushLife. It was still in an individual's name until it just changed hands.]