Domain Name Wire

Domain Name Wire

Displaying posts tagged under "udrp"

  • UDRP: Girls Do Porn, but company Doesn’t Do Trademarks well

    1. BY - Aug 27, 2014
    2. Policy & Law
    3. 7 Comments

    Company runs site that is rather descriptive of its services.

    BLL Media Holdings has lost a UDRP it filed against Infinitoria Ltd over the domain name GirlDoPorn.com (in which “girl” in singular).

    The complainant purports to run the site GirlsDoPorn.com (in which “girls” is plural).

    BLL failed to show the World Intellectual Property Organization panelist that the domain name was confusingly similar to a mark in which it had rights.

    The domain name GirlsDoPorn.com was originally registered in the name of another company. The complainant tried to explain this discrepancy in a supplemental filing, stating that it was registered by a predecessor entity. But it didn’t provide any evidence of this.

    Another problem for the complainant was that the U.S. Patent and Trademark Office refused its trademark application for the phrase on the basis that it describes a feature of the Complainant’s services. (Think about it for a moment.)

    John Berryhill represented the domain name owner.

    UDRP decision

  • 2 very odd UDRP cases claim “technological confusion”

    1. BY - Aug 06, 2014
    2. Policy & Law
    3. 2 Comments

    Part of brand is in domain names, but you have to look closely for it.

    I was rather confused a couple months ago when I saw fashion designer Philipp Plein filed UDRPs against peopleincasinos.com and supportpeopleinneed.org.

    Both sites featured clothing that the sites claimed was authentic Philipp Plein clothing.

    But what did these domain names have to do with Philipp Plein?

    Well, take a look at the domain names again:

    PeoPLEINcasinos.com
    SupportPeoPLEINneed.org

    The person who created the sites apparently chose domain names that embedded the Plein name with the hope of getting better search engine results. (I’m somewhat skeptical that this would help.)

    Is this enough to pass the confusing similarity requirement in UDRP?

    The complainant made the case that the domains created “technological confusion”, but did not provide evidence to that effect.

    Even if it had, panelist David J.A. Cairns indicated he would have denied confusing similarity:

    Further, a consequence of the Complainant’s argument is that any trademark appearing in a domain name would satisfy the confusing similarity test on the basis that it would be recognized within the domain name by search engines. On this basis, to take the example from WIPO Overview 2.0 paragraph 1.2, the domain name would be confusingly similar to the trademark HEAT. This result changes the current understanding of confusing similarity, and suggests that even if confusion by technological effect were accepted, visual or aural characteristics cannot be disregarded entirely. In this case, the Complainant has also failed to satisfy paragraph 4(a)(i) of the Policy on the grounds that that there is no visual or aural confusion at all in the present case between the PLEIN trademark and the disputed domain name. It is not sufficient that the trademark is only visible when the viewer is told it is definitely there.

    Cases like these weren’t made for UDRP.

  • Panel denies QIQ.com UDRP, but denies RDNH

    1. BY - Aug 05, 2014
    2. Policy & Law
    3. 1 Comment

    QIQ.com to remain with domain name owner after WIPO decision.

    A World Intellectual Property Organization panelist has denied a UDRP filed against the domain name QIQ.com. However, she denied a reverse domain name hijacking claim without giving any sort of reason.

    Based on the facts presented to the panel, respondent Netico, Inc registered QIQ.com in 1999, more than a decade before complainant QIQ Communications Pty Ltd had any rights to the QIQ name.

    Therefore, panelist Gabriela Kennedy ruled that the domain name was not registered in bad faith.

    QIQ Communications made at least one argument in its case that it knew was false:

    The Respondent registered and is using the Disputed Domain Name to intentionally attempt to attract for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or other online location.

    This is, of course, impossible given the date of registration compared to the trademark rights. Yet Kennedy wrote:

    The Panel cannot conclude that the Complainant filed its Complaint in bad faith for the purposes of Reverse Domain Name Hijacking, and mere lack of success of the Complaint is not in itself sufficient for a finding of Reverse Domain Name Hijacking.

    The Panel is of the opinion that the Complainant has not filed its Complaint in bad faith as an attempt at Reverse Domain Name Hijacking.

    So apparently you can lie in a UDRP pleading and it’s not reverse domain name hijacking.

  • An interesting dates question in a UDRP

    1. BY - Jul 23, 2014
    2. Policy & Law
    3. 1 Comment

    What if you registered a domain long ago, let it expire, and then registered it again?

    The date you first registered a domain name is a critical factor in a UDRP.

    Generally speaking, if your registration predates the complainant’s rights in a term, then the complainant can’t win a UDRP. That’s because it’s impossible that you registered the domain name in bad faith…unless you’re psychic.

    Some complainants have argued that the renewal of a domain name can be in bad faith. Some outlying panelists have bought this argument.

    Dates in a just-decided case for proquidity.com bring up another interesting question: what if you registered a domain a long time ago, let it expire, and then registered it again?

    If the complainant’s rights in the matching trademark were gained after the original registration but before the new one, did the rights predate the registration?

    The question is begged but not answered in the proquidity.com dispute. The re-registration of the domain name still predates the complainant’s rights, but just barely.

    Common sense suggests that a panelist, in a case in which this question does need to be answered, would consider the earlier registration as evidence in the question of “registered and used in bad faith”. Of course, the circumstances of the expiration and reason for re-registration would require examination.

  • Domain name owner loses UDRP, sues, gets $7,500

    1. BY - Jul 17, 2014
    2. Policy & Law
    3. 5 Comments

    MyArt.com owner can keep domain name and some cash.

    My ArtIn April I wrote about how the owner of My-Art.com filed its second UDRP against the domain name MyArt.com and won.

    It was a bad decision based, in part, on a incorrect claim that the domain name was transferred to a new owner after the first decision.

    The owner of MyArt.com didn’t respond to the UDRP filing, but sued after the decision was handed down.

    The lawsuit, filed by law firm Lewis & Lin LLC, claimed reverse domain name hijacking under the Lanham Act, as well as related state unfair competition claims.

    My Art SAS, the French company that filed the UDRP, settled after the lawsuit was filed. It won’t get the MyArt.com domain name and also agreed to pay statutory damages, attorney’s fees and litigation costs.

    Court records show the payment was just $7,500. Not much, but a nice turnaround from having to give your domain name away to getting paid for your inconvenience and legal fees.