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.

Better late than never, Apple gets iPodNano.com domain name.

It took about four years, but Apple has finally gotten its hands on the iPodNano.com domain name.

Apple filed for arbitration with National Arbitration Forum to get the domain name. The owner of the domain name, Fusion Media Ltd., did not respond to the complaint and the arbitrator found in Apple’s favor.

Fusion Media registered the domain name in September 5, 2005, two days before Apple officially introduced the iPod Nano. Some product manager at Apple must have been asleep at the wheel. Apple famously paid through the nose to get the iPhone.com domain name, a name it could have secured prior to launch for much less.

iPodNano.com is the second domain name Apple has won through arbitration this month. Earlier this month it won the domain name iTunes.com.mx, a country code domain name for Mexico.

Seller of Vodka.com wins UDRP case over StreetPrice.com.

Roy Messer, perhaps best known in domain circles for selling Vodka.com for $3 million, has successfully defended an attack on his StreetPrice.com domain name. Messer was represented by domain attorney Ari Goldberger.

The complaint was brought by the web site StreetPrices.com, a price comparison web site launched in 1997. Messer registered the StreetPrice.com domain name in 1998.

The panel found that the Messer showed he had rights or legitimate interests in the domain name for a number of reasons, including that “Street Price” is a descriptive and generic term. Messer has also registered other descriptive domain names, such as BigSavings.com. StreetPrices.com’s trademark wasn’t added to the USPTO register until 2001, and at that point was only on the supplemental register.

There was some debate amongst the three person panel as to if StreetPrices.com was identical or confusingly similar to the StreetPrices.com mark. The majority of the panel found in favor of the complainant, but panelist Neil Brown dissented, writing:

…the question is whether the domain name streetprice.com is confusingly similar to the STREETPRICES.COM trademark which describes in the most general way the street or discounted prices of undefined objects but, presumably, of goods and services in general. It is, of course, tempting to conclude that the mere omission of the letter “s” in the domain name generates a confusing similarity. But, as was pointed out in Tire Discounters, Inc. v. TireDiscounters.com, where the domain name tirediscounter.com was held not to be confusingly similar to the trademark TIRE DISCOUNTERS, it was the absence of the “s” that made the difference, for, as the three person panel said: “The omission of the letter “s” from the mark is one of those small differences that matters in this context”. It matters because the trademark itself is of a very generalized nature and the difference in spelling in the domain name suggests that the domain name may well be dealing with a different subject than the trademark.

Date set for trial over troubled acquisition.

A jury trial date of April 6, 2010 has been set for the lawsuit between Thought Convergence and Jay Westerdal et al.

Thought Convergence (TCI) filed the lawsuit against Westerdal on May 1 over TCI’s purchase of Westerdal’s company Name Intelligence. Name Intelligence is best known for its DomainTools web site, but it also owns web hosting company Spry. In the suit, TCI claimed alleged breach of securities exchange agreement, breach of employment and non-compete agreements, breach of fiduciary duty, breach of covenant of good faith and fair dealing, and accounting.

Westerdal responded with a number of counterclaims, alleging a “Myriad of deliberate misrepresentations made by TCI during the negotiation process and execution of the agreement.”

Both parties have denied each others’ allegations.

The discovery cut-off is February 16, 2010 and the final pre-trial conference is scheduled for March 8, 2010. It’s rare that a case like this actually makes it to trial; it is likely the case will be settled before then.

Let’s kill the hubris.

Hey, I’ve got a little secret for you: no one gives a crap about the domain name industry. It’s small potatoes. It’s a speck on a fly. It’s nothing. And people don’t like it, too.

I personally think the domain industry is great and incredibly important. But the fact remains that most people outside our industry don’t care or know about it. We’re tiny. And if they know about it, they certainly don’t care for domainers.

I bring this up because a lot of people on forums are calling for law enforcement to investigate the Snapnames scandal.

Here’s law enforcement’s message: we don’t understand and we don’t care. You’re too small to worry about.

Already, someone has filed a complaint with the Oregon Department of Justice. The response?

…Thank you for the information that you sent us. Although there does not now appear to be a need for an investigation or legal action, we will keep your information on file as part of the public record.

Our primary goal is to identify and eliminate the most serious marketplace violations, and many factors are considered in determining what cases we should pursue.

Read: you guys think this is a bigger deal than it is.

Can you imagine if the Oregon Department of Justice pursued and actually handed down an indictment in the SnapNames scandal? How would they explain to the public about their “win” to protect cybersquatters (as the public views it) at tax payers’ expense? “Yeah, so there are these things called domain names. They expire, and people buy these expired domains in an auction…(blank stares)…by taking action, we have helped protect the people that profit from expiring domains, people that every citizen of Oregon should care about their livelihood”.

Let’s face it. Domain theft happens every day. How many arrests and indictments do we know about? One. And that took perseverance to get the police to investigate.

The typical law enforcement agency doesn’t know the first thing about domain names. They understand burglary, terrorism, and domestic violence. And they get glory for pursuing those things.

Like it or not, the domain industry is minuscule. And disliked. Especially people who buy expired domain names. So don’t count on much public empathy or protection from the authorities.