Displaying posts under "Policy & Law"
Company claims rights dating to 2010 and domain name was registered in 2002. But…
Personal Communication Systems, Inc of Winston-Salem, North Carolina, has been found guilty of reverse domain name hijacking.
The company filed a UDRP against the owner of HealthWave.com. Healthwave is the name of an automated medical appointment reminder system that Personal Communication Systems sells.
It has a trademark for Healthwave, but the earliest claimed use dates to 2010. The domain name was registered in 2002.
This was the basis for the company losing the UDRP as well as being found guilty of reverse domain name hijacking:
The question before the Panel on this topic is whether the Complainant knew or should have known that it could not prove registration in bad faith at the time that it filed the Complaint. In the Panel’s opinion, the answer to that question must be in the affirmative. The content of the amended Complaint itself makes this clear. Paragraph 8 expressly sets out the date of registration of the disputed domain name, namely October 13, 2002. Paragraph 12 contains a specific averment regarding the month and year on which the Complainant is said to have adopted the use of the HEALTHWAVE mark in commerce, namely June 2010. Despite listing these dates, the Complainant makes no attempt to address the obvious issue of the lengthy intervening period between them. Nor does the Complainant attempt to demonstrate the existence of any earlier rights in its HEALTHWAVE mark. As such, the Panel considers that the Complaint was bound to fail and that the Complainant knew or ought to have known this at the point of filing.
Unfortunately for the complainant, it hired lawyers that don’t know how to look up historical whois records at DomainTools. The whois record for the domain name changed from someone in Italy to a company in Panama at the beginning of 2013.
Based on common ownership of other domain names including Premiums.com, I don’t think the owner actually changed. But pointing out this change would have probably been enough for the company to escape the reverse domain name hijacking charge.
Panelist orders generic domain be transferred to local startup accelerator.
A National Arbitration Forum has ordered the transfer of the domain name Galvanize.com in a highly questionable decision.
At every turn in deciding the case, NAF panelist Dr. Reinhard Schanda gave the benefit of the doubt to complainant Galvanize LLC. That said, the respondent could have put up a better case.
Respondent Brett Blair / ChristianGlobe Network bought the domain name in an expired domain auction at NameJet in September 2011 for $2,331. He did not mention this purchase price and the circumstances in the response, apparently.
The complainant filed a trademark for “Galvanize” in May 2012 claiming a first use in November 2011.
That alone should have been enough to show that the respondent didn’t register and use the domain in bad faith.
Apparently Galvanize LLC filed an affidavit claiming that it had actually used the brand for its startup accelerators businesses prior to this first claim date. Although it provided more evidence of use of the brand, the panelist didn’t state that this evidence predated the respondent’s domain purchase.
It’s highly unlikely that Galvanize had taken on a secondary meaning and was well known, especially where the respondent lives (Florida) at the time he registered the domain. It appears the complainant’s Galvanize.it domain was just registered in June 2011.
I’d bet this domain was registered as an investment for its generic meaning.
Based on my reading of the response, the respondent focused on a plan for legitimate use rather than stating that this was a purchase of a generic domain, which is legitimate.
In fact, the panel wrote:
In the Panel’s opinion the most realistic interpretation of the actions of the Respondent is that he registered the Domain Name in the hope that he might be able to sell it at a significant profit to the Complainant or alternatively to someone who could use the Domain Name to his commercial advantage by engaging in the activity contemplated by paragraph 4(b)(iv) of the Policy.
It’s highly unlikely that he registered it with the complainant in mind. He probably had know idea the complainant existed, unless he happened to traveled forward in time.
The complainant also says it corresponded with a broker from DomainHoldings that said the domain was for sale for $100,000. The respondent does not recall ever engaging with DomainHoldings.
This is not a clear cut case of cybersquatting. This was a bad decision.
A visualization of reality for brand protection costs and new top level domain names.
One thing that’s clear from talking to various people at ICANN 50 this week is that they are surprised by the low level of defensive trademark registrations in new TLDs.
The trademark lobby expected a nightmare. New TLD applicants expected a lot less, but still more than they got.
Here’s the reality in a simple chart:
No harm done to the trademark lobby for exaggerating the cost? Not really. People will point out the results of brand protection in this round when creating the next round of TLD expansion.
Company that owns TheGreatcourses.com loses two cases in one day.
The Teaching Company, LLC, d/b/a The Great Courses, lost two UDRPs on the same day this week.
In both cases, The Great Courses failed to prove the domain names were registered and used in bad faith.
Marchex has owned GreatCourses.com since it acquired Yun Ye’s portfolio in 2004. Berkens registered GreatCourse.com in 2003.
Over ten years later, The Great Courses decided it wanted to upgrade its domain name TheGreatCourses.com.
Its trademark rights at the time the domain names were registered were weak at best.
The cases were interesting because the complainant tried to disqualify one panelist, Neil Anthony Brown. The rest of the three person panel ruled that this wasn’t right. Brown recused himself anyway. Another panelist wasn’t appointed so the cases were effectively decided by two panelists.
The complainant pointed to Brown’s record on cases involving attorney Berryhill. It seems that Brown has found overwhelmingly in favor of respondents that Berryhill has represented.
This is funny, because every single panelist that has heard cases in which Berryhill is involved will have a high rate of finding in favor of the respondent. The guy doesn’t lose many cases.
Despite all of this, the panels did not find The Great Courses guilty of reverse domain name hijacking.
The Great Courses has a pending case against TheGreatCourse.com.
Verification requirement ensnares hundreds of thousands of domain names.
One of the requirements for domain name registrars under the 2013 Registrar Accreditation Agreement is that they must verify the contact details of registrants.
Most registrars are fulfilling this requirement by sending an email to registrants asking them to click a link to confirm. Registrars must suspend domain names if owners don’t verify their information.
We’ve had one-off examples of domain names being suspended due to this requirement. Now we have hard numbers: at least 800,000 domains have been suspended since January 1.
Speaking at the Registrar Stakeholders Group meeting with ICANN’s Board in London today, Tucows CEO Elliot Noss said that number was collected from domain registrars that have about 75% of all registrations. He suspects the suspension ratio will be higher for registrars not included in the total because more of them are in parts of the world where it’s harder to verify.
Noss drew a parallel between the verification requirement (which only hurts good actors and doesn’t harm bad actors) and efforts underway to change whois. He asked ICANN’s board what problem it is trying to solve with the whois change.