Domain Name Wire » wipo

Baby Products Company Loses Battle Against Bisexual Web Site

Andrew Allemann — Mon, 01 Mar 2010 16:50:29 +0000

Baby products company loses fight with bisexual dating site.

UPDATED: Lamprecht AG, which owns the bibi brand of childrens products, has lost its attempt to get the domain name bibibaby.com. What makes this even more interesting is that the domain name was originally registered for a bisexual dating site.

The owner of the domain name stated that she registered the domain name because “‘bibibaby is in fact a word play in English referring both to bisexuality and to the well known song ‘Byebye Baby’”. She provided proof of the domain name’s use for a bisexual dating site when she registered it back in 2002. The web site had bugs and was removed about a year later, and the domain name no longer resolves.

Although everyone agreed that the complainant has a mark for bibi, the WIPO UDRP panel found that the domain owner has rights and a legitimate interest in the domain name, and that it wasn’t registered in bad faith. Further, the complainant appeared to have only brought the complaint after failing to buy the domain name. Also curious was Lamprecht’s registration of Bibi-Baby.com just a week before filing the complaint.

With regards to reverse domain name hijacking, panelist Alistair Payne wrote:

This is a classic case in which the parties operate in separate fields of activity and where the Respondent has acted independently and legitimately to register the Disputed Domain Name for a real business activity. Although, the Complainant may be concerned that people might, at least initially, associate it with the Disputed Domain Name or with the Respondent, the Policy was only designed to address circumstances of cybersquatting and not complaints of possible tarnishment. Although the Complainant appears to have sat on its hands for a number of years it only initiated this Complaint after the Respondent failed to respond to its attempts to acquire the Disputed Domain Name. Further, the Panel is not satisfied that the Complainant was aware at the time of filing of the Respondent’s initial website and business offering. Accordingly the Panel declines to make a finding of reverse domain name hijacking.

Review and rate domain name parking companies at Parking Judge.

Verdict Reached in PaperSnowflake.com Domain Dispute

Andrew Allemann — Fri, 19 Feb 2010 02:14:21 +0000

This case was over before it even began.

I was scratching my head when I saw that someone had filed a UDRP against the owner of PaperSnowflake.com. Who in the world would go after a generic name like that?

We now have the answer, but I’m still scratching my head.

Patricia Kelley, who owns PaperSnowflakes.com (plural), filed the case. She operates a web site that instructs people on how to create paper snowflakes. With the help of counsel, she tried to argue that she had common law rights in Papersnowflakes.com, and that the singular version was confusingly similar.

The panel didn’t buy it, and Kelley didn’t even meet the first requirement to win a UDRP.

What’s amazing to me is that the owner of PaperSnowflakes.com apparently offered to sell the domain to Kelley for $2,000. That’s a great price, and the domain would probably fetch at least that much on the market. It’s also probably less than what she spent filing the UDRP and hiring a lawyer.

The respondent asked for a finding of reverse domain name hijacking. Panelist Alistair Payne neglected to consider the issue.

Review and rate domain name parking companies at Parking Judge.

CNN en Espanol: News Network Wants CNN.es Domain Name

Andrew Allemann — Mon, 08 Feb 2010 17:49:45 +0000

News network wants Spanish domain name.

Cable News Network, aka CNN, wants to get its hands on the CNN.es domain name. There’s just one problem: it was registered back in 2005. So the company has filed a domain dispute with World Intellectual Property Organization to try to get the domain name.

At the time of writing CNN.es doesn’t resolve to a web site. But the domain’s owner appears to be based in the United Kingdom if his email address is any any indication. (.Es is the country code for Spain.)

This isn’t the first time CNN has challenged domain names through domain arbitration. It filed 8 cases last decade, winning all 8 of them. However, this appears to be the first challenge the company has made for a second level domain name merely containing “CNN” in a country code domain.

CNN knows the value of a good domain name, even if belatedly. In 2008 the company ponied up $700,000 for the domain name iReport.com. CNN had made the iReport brand valuable thanks to its crowdsourced news program by the same name.

Review and rate domain name parking companies at Parking Judge.

Eyeglass Company Guilty of Reverse Domain Name Hijacking

Andrew Allemann — Sat, 06 Feb 2010 03:10:02 +0000

Eyewear company’s dates don’t add up.

Zenni Optical, LLC, a retailer of eyeglasses, has been found guilty of reverse domain name hijacking by a World Intellectual Property Organization arbitrator.

Zenni Optical filed the complaint to get the domain name Zenni.com. But its dates didn’t add up. Zenni.com was registered in May 2002. But Zenni Optical didn’t register trademarks in Zenni and Zenni Optical until 2008 and 2009 respectively.

That’s where things get interesting. In a supplemental filing, Zenni Optical submitted a trademark licensing agreement between the trademark holder (which was apparently an individual) and Zenni Optical. That licensing agreement appeared to have been signed in September 2002, but referred to trademarks not obtained until 2008 and 2009. How could that be? Here’s what the arbitrator wrote:

…the license agreement is purportedly signed and dated in September 2002. At the same time, the agreement refers to the marks registered in 2008 and 2009. From this alone, it is self-evident that the agreement cannot, in fact, have been made in September 2002 but that, at the earliest, it must have been made after the registration of the second trademark in March 2009. The agreement could conceivably have been made any time up until the Complainant’s supplemental submission. Neither the Complainant nor the terms of the license agreement indicate when it was made. As such, it is not possible for the Panel to rule out the possibility that it was made after the filing of the Complaint.

Hmm. What makes the situation even more interesting is that, even if the trademarks were first used in September 2002, that would still be after the domain name was registered.

Review and rate domain name parking companies at Parking Judge.

Roche Loses Valium Domain Case

Andrew Allemann — Mon, 01 Feb 2010 15:30:02 +0000

Case recognizes limitations of UDRP.

F. Hoffmann-La Roche has lost a domain name dispute for the domain name ValiumNoPrescription.biz in a case that recognizes important limits of the Uniform domain-name Dispute Resolution Process (UDRP).

Roche filed more domain disputes under UDRP last year than any other company, and it usually wins without contest. But in this case, even though Valium is a trademark of Roche, UDRP panelist Dan Hunter noted that there’s no way an internet user would confuse ValiumNoPrescription.biz with a site owned by Roche. After all, getting prescription drugs with no prescription isn’t something Roche would offer.

…here the domain name involves a drug name and a means of procuring it (i.e. without prescription). In this Panel’s view, Internet users are not going to be confused about the purpose of the website, nor are they likely to think that the site is operated by the Complainant. Rather, they will go to the website associated with the domain name thinking that they will be able to obtain drugs without a prescription, in the nature of all Internet pharmacies.

That’s not to say that Hunter finds the domain owner’s behavior acceptable. In fact, he believes the contrary. However, the panel discusses how the use of this domain name isn’t meant to be objected to under UDRP:

As much as unlicensed Internet pharmacies might be appalling and dangerous and desperately in-need of regulation, the Policy is not intended, nor is it well-adapted, to stop this type of Internet commerce. In this Panel’s opinion, Paragraph 4(a)(iii) was always intended to track the standard international understandings of what amounted to an abusive misappropriations of a trademark, misappropriations of which demand either consumer confusion or some kind of unfair competition / passing off. Proof of this can be seen both in the examples articulated in paragraph 4(b)—all of which fit into one or other of these categories—and in the discussion in WIPO’s Final Report to ICANN of April 30, 1999 which led to the development of the UDRP.

Review and rate domain name parking companies at Parking Judge.

Roche, Lego, and Google File Most Domain Arbitration Cases in 2009

Andrew Allemann — Tue, 19 Jan 2010 19:33:35 +0000

Top UDRP filers for 2009.

Here’s a message to all the cybersquatters out there: don’t mess with the companies on this list.

Using data from UDRPSearch, Domain Name Wire tabulated the total number of UDRP cases filed by these companies in 2009. This isn’t as easy as it sounds, given that both WIPO and National Arbitration Forum use different names for some companies, and some companies even use multiple names when filing cases with the same provider. Furthermore, National Arbitration Forum doesn’t disclose the complainant until after a case is decided, so a few late cases aren’t included in this data.

F. Hoffmann-La Roche (56) - the pharmaceutical giant filed 54 cases with WIPO and 2 with National Arbitration Forum. Part of the uptick was to take down sites promoting Tamiflu for swine flu. La Roche didn’t lose any of them.

LEGO Juris (55) - just because it sells colored blocks, doesn’t mean Lego is all fun and games. It filed 55 cases last year, and has yet to lose.

Google (45) - Google was fairly quiet with UDRPs until this year. It won every decided case except one — Groovle.com.

State Farm Mutual Insurance (36) - a perfect 36-0 on 2009 cases.

Farouk Systems Inc. (35) - this hair care company doesn’t mess around. In addition to filing 35 cases last year, it is out of the gate with 17 cases filed in just the first few weeks of 2010. It hasn’t lost a case yet.

Sanofi-Aventis (30) - another active drug company.

Microsoft (28) - a perfect record in 2009.

AOL (26) - AOL lost one case in 2009. But it is delusional when it comes to trademarks.

Nervous Tattoo (26) - Ed Hardy make turned on the spigot in the second half of the year. It’s a perfect 26-0.

American Automobile Association (25) - interesting strategy results in wins of aaaerotica.com, aaanudes.com, and aaablondes.com. It lost a UDRP for AAA.net, but convinced the owners to hand over the domain when it filed a lawsuit.

Compagnie Gervais Danone (23) - The company won most of its cases, but lost cases for Activia.ch and ProActivia.com, and got a partial victory on another.

Victoria’s Secret (21) - lingerie retailer runs the table 21-0.

Review and rate domain name parking companies at Parking Judge.

German Lottery Provider Gets NKL.com Back 3 Years After Theft

Andrew Allemann — Tue, 19 Jan 2010 16:38:23 +0000

Lottery wins domain name it says was stolen in 2006.

German state-owned lotto company NKL Nordwestdeutsche Klassenlotterie has won the transfer of the NKL.com domain name, three years after the domain name was allegedly stolen. NKL won the domain name through a WIPO proceeding.

In a strange series of events, it appears the domain name may have been stolen in 2006 but NKL didn’t realize this until 2009. The domain name was set to expire on October 10, 2006. In August 2006, the whois information suddenly changed and the domain was renewed. The whois ownership information then changed several times in the next three years, but the nameservers continued to point the domain name to NKL’s web site. For three years, NKL had no idea the domain name wasn’t under its control.

It wasn’t until the domain name pointed to another web site in 2009 that NKL says it became aware of the alleged theft. NKL alleged the owner of the domain name listed it for sale on expired domain name site NameJet. A look at historical whois records shows that it was likely added to NameJet because it expired on October 10, 2009.

The owner of the domain name didn’t respond to the complaint and the panel awarded the domain to NKL.

Review and rate domain name parking companies at Parking Judge.