A review of recently filed domain name arbitration cases.

Here’s a quick look at recently filed arbitration cases at WIPO and National Arbitration Forum. Check back for updates as the cases are decided.

Ping.me: Although the domain owner won’t talk, my guess is Ping Golf filed this case. They’ve been aggressive in the past trying to get Ping.net and other domains.

GoldenGlobe(s).com: Hollywood Foreign Press Association, which runs the Golden Globe Awards, is trying to get it hands on the .coms. Its official site is GoldenGlobes.org.

Redbull.mobi: looks like Red Bull wants to put some energy in your pocket.

NameJe.com: eNom and Network Solutions, co-owners of NameJet.com, want to get their hands on this typo.

Arena.com: Arena Distribution, S.A. wants Arena.com. I sure hope this is some sort of doman theft case, otherwise it looks a lot like reverse domain name hijacking.

ISO.mobi: International Organization for Standardization, famous for standards like ISO 9000, apparently has rights to this three character domain. As with Arena.com, I sure hope there’s something I don’t know about here.

Universityoftexasatdallas.org: The University of Texas continues to rack up domains through UDRP.

Citibank.ws: a .ws domain dispute? I suppose as a bank you need to cover everything to stop phishing.

Online casino files UDRP, but when was it actually founded?

PokerHost.com has filed a UDRP complaint with WIPO to get the domain name PokerHost.NET. If you’re not familiar with the online poker industry, many poker sites use the .net version of their name for advertising. The .net site actually doesn’t allow real money betting and is either a free version or tutorial site, so it can be advertised on TV. Of course the short term goal is for people to type in .com instead, and the long term goal is to convert free players into paying players.

Russ “Dutch” Boyd registered PokerHost.net July 14, 2004. The company that runs PokerHost.com registered the domain name in 2002. But as you’ll see below, it didn’t launch its online casino until after Boyd registered the domain.

Boyd describes “poker host” as a generic term and points to plenty of evidence suggesting that. He says he registered the domain name in 2004 when he traveled to Florida to host a TV pilot called Holdem or Foldem. Boyd is one of 600 World Series of Poker bracelet holders.

But the brunt of Boyd’s defense in the UDRP is that he registered the domain name before he could have had any idea that PokerHost.com was going to be an online casino or a trademark.

In PokerHost.com’s complaint, it writes:

Complainant first began use of its domain name and the POKERHOST.COM mark in February 2002. Printouts of the front page of Complainant’s website and the corresponding WhoIs information are attached as Exhibit 5.

This is disingenuous at best. The “printout” it provided was of the PokerHost.com site in 2008. And if you look back in time you’ll find that the .com site didn’t exist when Boyd registered the domain name. Boyd looked on Archive.org and found the first “real use” of the domain name on October 24, 2004. At that time a message on the site said the casino would open in December. (Archive.org confirms that it didn’t actually open until January 2005.)

Up until that date various holding pages were on the site, including a standard error page:

So one thing is clear. Despite what the company claimed as fact in its UDRP — that it “began use of its domain name and the POKERHOST.COM mark in February 2002″ — it didn’t start using the domain name for its casino until after Boyd registered the domain. Regardless of the other facts in this case, it’s frustrating to see companies and their lawyers fudging dates in UDRPs and requiring the respondent to discover these falsehoods.

Schilling’s company comes down on wrong end of ChilliBeans.com decision.

Frank Schilling’s Name Administration has lost its first UDRP decision, spoiling a perfect record of success (according to searches at National Arbitration Forum and WIPO).

Schilling, teamed up with attorney John Berryhill as usual, failed to convince a three person WIPO panel that its use of the domain name ChilliBeans.com was generic. The complainant is a company selling sunglasses under the “Chilli Beans” brand, mostly in Brazil.

Based on his record, you can have no doubt that Schilling registered the domain name with the generic term in mind. But at some point in time links related to glasses started popping up on the landing page. Most of the page was about the generic term chilli beans (more commonly spelled “chili”), but apparently there were a limited number of links related to glasses.

The complainant brought up the issue of willful blindess, as described by the panel:

There are circumstances, however, where an unwavering adherence to conventional wisdom may unduly and unnecessarily frustrate the fundamental purposes of the Policy. This is clearly the teaching of Panel decisions holding that that those who register domain names in large numbers for targeted advertising through the use of automated programs and processes cannot be willfully blind to the possibility that the names they are registering will infringe or violate third-party trademark rights.

Essentially, here’s what happened:

1. Schilling registered what he believes to be a generic keyword domain name
2. The domain is parked, and automated programs populate it with ads related to chilli beans as a food
3. Over time, some ads that may be construed as relating to the trademark show up
4. The trademark owner files UDRP and gets the domain name

Incidentally, Chilli Beans uses the domain chillibeans.com.br, so it’s no surprise that many people ended up at chillibeans.com. The complainants used Alexa data to show that 75% of visitors to the domain name were from Brazil. It also showed a Google search that its domain name is first in Google for the term “Chilli Beans”. This must be in Brazil only, because a search I just ran shows it in the #5 spot.

You can also infer from reading the decision that, after Schilling removed all links related to the trademark, the complainants then visited the parked page and did a search for a trademark related term to bring up a page of “infringing” links. You can do this on just about any domain. [John, if you read this please confirm if this is the case.]

This is a case of finding a “gotcha” and could really happen to anyone. Although it’s outside the scope of the policy, it would seem that in a case where someone has such a solid record of avoiding trademarked domains, and something small happens to potentially infringe, that changing the domain’s content to be non-infringing should be a fair resolution.

After all, here’s what this case is really about: Chilli Beans is moving into the U.S. and wants the .com domain name.

[Full decision here. Thanks Ramiro for the tip.]

An update to the ongoing saga over BME.com.

BMEzine.com’s home page.

BMEzine has filed a response to Gregory Ricks’ lawsuit over the domain name BME.com. Here’s a quick history:

-In August, Gregory Ricks lost the domain name BME.com in a WIPO decision under UDRP. Although it is a generic three character domain name, he had a picture and ads related to tattoos and body modification. There is a popular web site called BMEzine.com about tattoos, body modification, etc. that filed the UDRP action.

-In September, Ricks filed a lawsuit to block the transfer of BME.com to BMEzine.com. You have ten days after a UDRP decision to file such a lawsuit and block the transfer of the domain. Ricks turned the table on BMEzine and claimed that BMEzine was infringing on his brand.

Last week BMEzine filed its response and counterclaims to Ricks’ lawsuit. You can see the response here (pdf). BMEzine has summarized its response and the saga on its blog, but here’s a snapshot of some of its claims:

-BMEzine alleges that it agreed to purchase BME.com from Ricks prior to filing the UDRP, but then Ricks backed out and raised the price twice.

-BMEzine alleges that Gee Whiz Domains, a privacy service that was visible as the whois for BME.com, is the alter ego of Ricks. (The whois currently shows Gregory Ricks’ actual contact information.) The response lists trademark typo domain names that BMEzine believes are owned by Ricks through Gee Whiz Domains, including yahooemai.com, msnnb.com, officedepo.com and cnnmmoney.com.

Of course, the domain name BME.com by itself doesn’t infringe any trademarks. It was Ricks’ use of the domain to show ads for body piercing, tattoos, etc. that landed him in hot water. Odds are Ricks had never heard of BMEzine when he registered the domain; it was just another three letter domain acquisition. It’s possible, although I’m unsure, that he never optimized the domain himself and it was done automatically. The domain currently goes to a generic TrafficZ parked page, so it no longer infringes in my opinion. But “no longer” doesn’t matter; the lawsuit is about the period of time that the domain allegedly infringed on the BME brand.

[Please note: your comments are welcome, but any comment containing profanity will be deleted.]

Alternative rock group files UDRP to get domain name ahead of new album release.

Rock group Third Eye Blind has filed a UDRP claim to get the domain name ThirdEyeBlind.net. The claim was filed by lead vocalist Stephan Jenkins’ production company. Third Eye Blind’s official web site is the short and simple 3eb.com.

So why just get around to filing the UDRP now, and why only the .net version instead of .com? I have a couple hunches.

For the timing, Third Eye Blind is getting ready to release a new album in February 2009. It’s been about 6 years since the last album was released. The new album, to be released by Sony, is tentatively titled Ursa Major. Although 3eb.com is a great domain name, most web users likely type-in the entire “thirdeyeblind” name when trying to find the site.

So that begs the next question, why .net and not .com? Two reasons.

First, Third Eye Blind used the domain name ThirdEyeBlind.net in the last 1990s as the band’s web site. It appears to have let the domain lapse after acquiring 3eb.com.

Second, the owner of ThirdEyeBlind.com may be cooperating with the group, whereas the owner of ThirdEyeBlind.net isn’t. ThirdEyeBlind.com used to show a DomainSponsor parking page but no longer resolves.

The owners of ThirdEyeBlind.net seem to be dodging the band by changing its whois information repeatedly. The latest whois information shows the owner is “Third Eye Blinds & Curtains” of India. This seems like a ruse to claim that the domain will be used for a company with the same name. But the whois record has changed many times, according to DomainTools. It just changed to the current record between October 8 and October 24, 2008.

On September 26 the record showed Abadaba S.A. of Panama. On March 5, 2008 it showed a registrant in Marblehead, Massachusetts.

We’ll have to wait for the decision to see if these hunches are correct.