Displaying posts under "Policy & Law"
WIPO panelist hands down RDNH ruling.
Every once in a while I read a UDRP involving organizations in a world I simply didn’t know existed.
Such is the case in The American Association of the Order of St. Lazarus, Inc. v. Thierry Villejust over the domain name SaintLazarusUSA.com.
The complainant was found guilty of reverse domain name hijacking in the case.
The respondent is “a member of the governing council of the Orleans obedience and serves as the Grand Bailiff of the Grand Bailiwick of the USA which engages in charitable activities in the United States through a nonprofit organization, Saint Lazare USA, Inc. Respondent registered the disputed domain name in 2011 his capacity as Grand Bailiff of the organization.”
According to the respondent, both his organization and the complainant represent two obediences of the ancient “Military and Hospitaller Order of Saint Lazarus of Jerusalem” and each have used the names and symbols of the Order for centuries, beginning in the 11th century. Both parties claim their origins with the Military and Hospitaller Order of Saint Lazarus of Jerusalem, an order of chivalry founded by crusaders in the 11th century.
(You can read more about it on Wikipedia.)
The respondent notes:
Respondent’s organization has roots in one faction of the Order. That faction has at times operated under the auspices of the Royal House of France, initially through the 1800s, after which time it operated without that protection. In 2004, when the Royal House of France resumed its protection, the Order split, resulting in more than one obedience. Respondent represents the US arm of an obedience that operates under the auspices of the French royal house known as the “Orleans obedience,” while Complainant apparently represents another branch of the order known as the “international Malta obedience.”
That’s some rich history.
Panelist Debra J. Stanek ruled in the respondent’s favor on all three elements of the UDRP.
Stanek found the complainant guilty of reverse domain name hijacking on four grounds:
- Although Complainant did establish ownership of US federal trademark registrations containing terms used in the disputed domain name, it did not provide any support for its claim of unregistered or common law rights in its
domain name or ownership of an international registration for LAZARUS and did not persuade the Panel that either of the marks that it did own was confusingly similar to the domain name.
- Complainant either knew or should have known, at the time of filing the Complaint, that it was not the “only legitimate organization” to use the name “The Military and Hospitaller Order of Saint Lazarus of Jerusalem” since the crusades.
- Complainant either knew or should have known, at the time of filing the Complaint that Respondent was affiliated with an organization that had rights to use the name “The Military and Hospitaller Order of Saint Lazarus of Jerusalem” and other indicia related to the Order.5
- The allegations of the Complaint were largely unsupported by facts, evidence, or argument and omitted material information regarding the history of the Order, and other pertinent facts that were, or should have been known to Complainant.
Yoyo.email claims it registered trademark-matching .email domain names for a legitimate fair use. Most National Arbitration Forum panels have disagreed.
You’ve probably never heard of Yoyo.email before, but it is one of the biggest individual registrants of new top level domain names in a single TLD. The company registered over 4,000 .email domain names.
The problem for Yoyo.email is that a large number of these domain names match famous trademarks, such as dunkindonuts.email, budlight.email, geico.email and footlocker.email.
As a result, the company has faced at least 15 UDRP/URS cases.
Giovanni Laporta, founder of yoyo.email, told Domain Name Wire he has received over 100 cease & desist letters about his .email domain names. I suspect many of them were generated after he clicked through Trademark Clearinghouse notices for many of his domain names.
So is the guy a big cybersquatter? Laporta says he has registered the domain names for legitimate purposes.
His company plans to offer a “certified email” service that verifies that emails sent to a company were actually delivered. He says his use of the domain names would be a “fair use” in a technical, backend manner and believes URS and URDP are being unfair to him.
He has convinced one panel that there’s at least question of fair use.
Yoyo.email appealed an adverse URS decision for stuartweitzman.email. The appeal panel overturned the original decision on the grounds that the use of the domain name for a free service at least “raises a question as to whether the proposed use will be a legitimate fair use under URS”.
But other appeal panels have found otherwise. He has lost three appeals so far.
In an appeal over lufthansa.email, the panel considered that a technical/backend, non-commercial use of the domain names, under some circumstances, could be seen as a legitimate use.
However, the panel found this at odds with Laporta’s statement that yoyo.email is a serious business with up to ten employees that has spent “a lot of money” developing its service. Laporta told the panel that it will “make money by the value of having large numbers of active users…”, by charging for connected social media, as well as connected advertising.
In one case he mentioned how the company would monetize the service. In another case he said that original statement about making money from it was in error.
Laporta told Domain Name Wire that all of the adverse URS/UDRP decisions have been based on what “may” happen in the future, not on the actual use of the domain names to date (nothing).
It’s worth noting that a panel just handed down a decision in favor of the registration of porsche.social, determining that the planned use as a free enthusiast site means the domain shouldn’t be suspended under URS. I suspect this will be a controversial decision.
Laporta plans to file a federal lawsuit seeking declaratory relief over his registrations.
Porsche.social is just a parked page, but its owners claim to be creating a free site for Porsche enthusiasts.
Car company Porsche has lost a Uniform Rapid Suspension cybersquatting case it brought against the San Jose, California owner of Porsche.social.
Interactiv Corporation told the URS panel that it plans to use the domain name for a free community for Porsche car enthusiasts and will put a disclaimer on every webpage that it is not affiliated with or authorized by the car company.
Thus, Panelist Karl V. Fink determined that “Complainant has not established by clear and convincing evidence that Registrant has no right or interest in the domain name and has not established that the domain was registered or is being used in bad faith.”
As of right now, I just see a parked page at the domain name.
I’ll admit to being a little surprised by this decision. Perhaps it hinged on the relatively short time the domain name had been registered and the owner’s intention to create a “free” site. Will that be monetized by advertising?
Can anyone register a brand name in a new TLD like .social and claim future plans to create a free community site?
Does a “free” service mean you are free to use a brand name in a domain name? Another URS panel, on appeal, ruled that offering a free service creates a question of legitimate use, and found for the respondent.
What happens if the domain is still parked months from now?
I suspect, at that point, Porsche could just file a UDRP.
4chan wanted to get the domain name 4chan.com.
Popular bulletin board site 4chan has lost a case it filed to get the domain name 4chan.com.
4chan, LLC, which operates the top 1,000 site 4chan.org, filed the complaint with World Intellectual Property Organization (WIPO) against Oversee.net back in March.
One commenter on my original story about the UDRP case thought it was odd that 4chan was just now coming after the domain name. That person also pointed out that 4chan was a name similar to another board called 2chan, which is why the name was selected in the first place.
The three person panel determined that 4chan did not prove that the domain name was registered in bad faith.
This was a lengthy determination, but essentially the panel said it was plausible that Oversee.net registered the domain name without the bulletin board, which was created a few months earlier, in mind. After all, there are other number-chan sites, like the aforementioned 2chan.
Given the length of time it took 4chan to file the case, it was harder for the panel to determine why Oversee.net originally registered the domain name.
Oversee.net has since sold its portfolio of domain names to Rook Media (technically the portfolio went to Sol Invictus Comiti, LP, according to the UDRP). This transaction took place shortly after the case was filed. My reading of the decision is that perhaps Oversee.net’s lawyers made things harder for Rook going forward by asking the question of whether this is a transfer of the domain to a new registrant by the rules of UDRP.
This story has been updated to include additional details from the UDRP case decision.
Delays now require all-party consent, so contention set resolution should accelerate.
ICANN has published an updated “auction of last resort” schedule for new top level domain names.
It’s harder for individual applicants to postpone these auctions now that the framework for handling name collisions is finalized.
Postponements are now only possible if all parties in the contention set agree to the postponement. In that case, auctions can be postponed up to two months from their original date.
The next set of auctions will take place in September, unless they’re resolved by the parties ahead of time. On the schedule for September are .buy, .tech, .coach, .vip, .flowers, .ltd and .health.
Sources tell me that some of the TLDs on this list have already been settled privately. We’ll see that a lot going forward: last minute settlements ahead of an ICANN auction.
There are benefits to settling contention sets privately. Losers in ICANN auctions only get a small refund on their applications, whereas private settlements typically involve a payoff. Also, ICANN auction prices are public whereas private ones are not.
ICANN has held only one auction of last resort so far: .信息 was auctioned for $600,000.