Double jeopardy comes to UDRP.

Last week I wrote about a WIPO domain arbitration case in which a complainant refiled a case after losing the first time. The arbitrator ruled that the complainant didn’t include any information in its refiled case that it couldn’t have discovered and filed in its original case. So he dismissed the case.

But over at National Arbitration Forum double jeopardy is alive and well.

On April 6, an arbitrator ruled that Traditional Medicinals Inc. should not get the domain name MothersMilk.com. Besides the domain name being an obvious generic domain name, the arbitrator ruled that Traditional Medicinals didn’t show any proof of non-use of the domain name:

Complainant claims that Respondent has registered the disputed domain name in bad faith. However, there is no allegation or evidence demonstrating the use or non-use of the disputed domain name. Thus, the Panel cannot make a finding of bad faith on the merits of the case

(Incidentally, non-use by itself does not mean it was registered in bad faith.)

Fast forward a couple months and Traditional Medicinals is victorious. The company filed the case again, and this time got lucky with the arbitrator, who ruled:

Respondent has registered the mothersmilk.com domain name but has not made an active use of it. The Panel finds that passive non-use also supports findings of bad faith registration and use under [the policy].

Basically the same case. Tried twice. Two different outcomes. Sure seems like a complainant appeal process to me. Remember, the complainant has all the time in the world to make sure its paperwork is in order before filing. The respondent only has a couple weeks.

Incidentally, Traditional Medicinals is the same company that swiped the generic domain name SmoothMove.com from WorldWide Media. WorldWide Media sued to block the transfer.

[Hat tip to UDRPsearch.com]

Man files UDRP for domain name Casinos.org.

To be fair, it was early this morning that I first saw an arbitration filing for the domain name Casinos.org at WIPO.

I rubbed my eyes. This must be a joke, right? Perhaps there was more to the story, I thought. I looked up the history of the domain, and it appears to be owned by the same person for a couple years. Something just didn’t seem right.

I emailed the owner of the domain to ask him what was going on. It’s no joke, he said. Someone had filed to get the generic domain name Casinos.org from him.

According to WIPO’s domain dispute database, the complainant is “Rimbault”. What’s his claim to the domain Casinos.org? Well, he owns a decidedly inferior domain name: C-a-s-i-n-o-s.org.

And here’s one of the big problems with UDRP as it stands today. Even though this claim seems dubious at best, the owner of Casinos.org is going to have to spend a few thousand dollars to defend the domain. Surely, we could at least add a financial penalty if a complainant is found of reverse domain name hijacking?

The owner wrote to me, “It’s going to cost me about 2-3k to defend from an idiot who owns c-a-s-i-n-o-s.org, a domain worth less the 1 cent.”

He said he could probably defend the case himself, but it’s not worth taking any chances.

Arbitrator rules against large financial firm trying to get three character domain name.

A World Intellectual Property Organization arbitrator has ruled against OVB Vermögensberatung AG of Köln, a financial firm based in Germany, in a dispute over the domain name OVB.com. The arbitrator decided that it was not clear the domain was registered and used in bad faith.

Working against the respondent, Michele Dinoia, was that he has been on the losing end of a number of UDRP cases involving big brand names. He has lost cases for Ford-credit.com, DatelineNBC.com, wwwAutoZone.com, and many others.

However, the arbitrator decided there wasn’t proof that Dinoia registered this particular name with the financial firm OVB in mind. In fact, OVB pointed out that the parked domain name included links related to a cutlery company called “Our Very Best”. Thus, the cutlery manufacturer may have been able to prove it was targeted, but the financial firm couldn’t.

As the Complainant has noted, between 1900 and World War II Camillus Cutlery, one of the oldest knife manufacturers in the United States, produced a well known line of knives under the brand OVB (an acronym for “Our Very Best”). Camillus resurrected the OVB brand use in the early 2000’s and obtained a United States trademark registration for OVB OUR VERY BEST on March 19, 2002. Two months later, the Respondent in May 2002 registered and began using the disputed domain name with a portal site containing advertising links for knives and cutlery. That this is sheer coincidence strikes the Panel as somewhat unlikely, particularly in light of prior decisions suggesting that the Respondent has targeted third-party trademarks on more than one occasion in the past. If this were the case here, however, it would appear that the Respondent was targeting Camillus Cutlery’s trademark rights rather than the Complainant’s trademark when registering the disputed domain name.

(Case decision here.)

Panel refuses to hear case due to lawsuit.

Tucows (AMEX: TCX) appears to be joining a chorus of domain name owners who are bypassing UDRP and filing lawsuits in response to domain disputes.

In a recent case DNA (Housemarks) Limited, owner of the Dunlop brand famous for automotive tires, filed for arbitration at World Intellectual Property Organization (WIPO) to get the domain name Dunlop.com. Dunlop.com is part of OpenSRS Personal Names Service, which uses thousands of personal last names to offer customized e-mail addresses. Tucows acquired these domain names when it acquired NetIdentity in 2006.

After Tucows filed a lawsuit in Ontario Court in order to keep the domain name, it informed WIPO and requested the current case be suspended. DNA argued the case should go forward, but the panelist decided this would be meaningless as its decision wouldn’t be implemented and the matter deferred to the courts.

Tucows’ NetIdentity domains have landing pages that describe the e-mail service but also include pay-per-click links. On the Dunlop.com page a message has replaced the pay-per-click links:

…We passionately believe that our use of each of our shared domains is a lawful and non-infringing use. The domain names that make up our Personal Names Service are critical business assets, and we will and do defend them when forced to do so.

Of course, we greatly prefer communication over litigation, so if you feel that you have a genuine trademark or other legal concern related to our use of one of these shared domain names, please write to (removed email) and we will be more than happy to assist you.

Please note that we have a long and successful history of defending our legitimate use of our 40,000+ shared domain names and the many clients who use these domains for their email and web address. This is the same portfolio of domain names that was reviewed and judged to be a non-infringing use of common surnames in Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999), and we continue to win UDRP claims that are filed against our shared domains.

Tamiflu maker files for arbitration to get swine flu domain names.

Roche, maker of flu medicine Tamiflu, has filed two separate arbitration cases with World Intellectual Property Organization to get domain names related to its brand that are taking advantage of the swine flu outbreak.

The first case is for swineflutamiflu.com and tamifluswineflu.com. Both domain names were registered last month by eComplex Corporation in Chicago. The domain names are parked.

The second case is for swine-flu-tamiflu.com and tamiflu-swine-flu.com. These domain names are owned by a Florida man who is using them for lead capture. The web site at these two domain names reads in part:

Tamiflu and Relenza are both in extemely short supply in most parts of the United States, UK, and Europe. Many conspiracy theorists speculate that this is because of government foreknowledge and the result of some sort of devious plan, but it’s most likely due to the recent Avian flu scare and leftover shortages from that Pandemic.

We currently offer 2 sources for Tamiflu and Relenza, both of which can be ordered online and shipped directly to your door, often within merely days. If you are interested in purchasing Tamiflu or Relenza for Swine Flu today, please contact us using the form below, and we’ll respond to your inquiries as fast as possible.