Sporting conference files dispute over three domain names.

The Pac-10 conference, which now has twelve teams with the addition of Colorado and Utah and will rebrand as the Pac-12, is again turning to the World Intellectual Property Forum in an effort to get domain names related to its new brand.

The group filed a complaint (and won) over pac-12network.com, pac12network.com, and pac-12network.org. All three are registered to an Ontario man.

The collegiate athletic conference first used World Intellectual Property Forum (WIPO) for a domain name dispute earlier this year when it tried to get the domain name Pac12.com. The owner of that domain name decided to avoid the WIPO process by suing the Pac-10 instead.

The suit was later dropped, but Pac12.com is still in the hands of a Utah man. He directs it to a page with a dozen products related to the late rapper Tupac, calling it a “12 Pac of Tupac”.

The Pacific-10 has been a bit behind with its web presence. Pac10.com was owned by publicly traded Marchex until 2009.

Company with $5 billion in annual sales decides to try to nab domain through arbitration rather than buy it. The price just went up.

The owner of TDS.com has successfully defended his domain name from Telephone and Data Systems, Inc in a UDRP case.

Telephone and Data Systems, Inc. is #450 on this year’s Fortune 500 list and generated nearly $5 billion in revenue last year.

TDS.com was originally registered way back in 1991. The current registrant, Daniel Wang, started working for the domain owner Trident Data Systems in 1997 and was listed as the Administrative and Technical Contacts for the domain name as of 2001.

Trident was then acquired by General Dynamics Advanced Information Systems (GDAIS).

In 2009 Wang worked with the company to transfer the domain name to his ownership.

Wang later parked the domain name, which may be where Telephone and Data Systems saw its opportunity.

The panel found that the complainant didn’t prove that Wang lacked rights or legitimate interests in the domain name.

Domainer wins case over geographic domain name brought by petroleum company.

What do you do when the name of a place has also been incorporated into a business name?

This was the issue in a recent UDRP case involving a Brazilian petroleum company and the domainer commonly known as “Mrs Jello”.

Ipiranga Produtos de Petróleo S.A. filed the case in an effort to get the domain name ipiranga.com.

Ipiranga happens to be the name of a famous river in Brazil as well as a historical district of São Paulo, Brazil.

The three person WIPO panel made a detailed argument about place names that are also brand names:

The incorporation of the name “Ipiranga” into the trademark of what is now a large oil company might be compared with other examples such as Sudan Petroleum Company; British Petroleum (BP); Gulf Oil International; Royal Dutch Shell; China National Petroleum Corporation; and Saudi Aramco. It is recognised, for the Complainant, that the location “Ipiranga” may now have a diminished meaning as a source of the Complainant’s products or activities. Nevertheless, it is unlikely in the context that a company name could grant exclusive rights to a geographical term such as Sudan, British, Dutch etc., or to a common dictionary word such as “shell” or “petroleum” unless used in a trademark sense in conflict with the trademark holder. Not even the use of a geographical descriptor standing alone, such as the one-time marketing of the brand “British” standing alone by British Airways, or “Danish” for bacon, could necessarily grant the trademark holder exclusive rights in the geographical description except in strictly a trademark sense. Only where a place name is associated more readily with its product than with the place, for instance Champagne, might the word arguably be claimed to stand alone as a trademark for the product.

This is well written and can be used in similar cases in the future.

It also didn’t help Ipiranga that it registered ipiranga.com.br back in 1996. Ipiranga.com wasn’t registered until 2003 and then the company didn’t even send a cease and desist letter until 2010, prompting the panel to write:

…the Panel notes that the rights the Complainant asserts so strongly were slept upon for at least the 7 years between the registration of the disputed domain name and the issuance of the cease and desist letter

Mrs Jello won the case.

Two largest UDRP providers opposed to UDRP reform.

The two largest UDRP providers — National Arbitration Forum (NAF) and World Intellectual Property Organization (WIPO) — are opposed to reforming the UDRP at this time.

Representatives of NAF and WIPO made statements this morning on an ICANN conference call regarding “The State of the UDRP”.

WIPO also released a written statement that you can view here.

It seems that intellectual property interests are concerned that reform is being pushed by people who want to reduce the protections afforded rights holders.

Here is one telling excerpt from WIPO’s statement:

The anticipated ICANN process does not inspire confidence that it would meet these standards. Even when it comes to trademark policies, IP institutionally appears to occupy only a minor ICANN role. Indeed, the more vocal advocacy observed thus far does not suggest a desire to enhance the UDRP’s effectiveness as a rights protection vehicle.

In other words, it’s domain owners that are pushing for UDRP reform and IP interests wouldn’t be able to get their way.

I don’t know that I agree — I think IP interests would manage to push through a lot on their behalf.

However, existing providers did say there are some procedural issues that need to be addressed.

WIPO panel questions Oversee.net defense of “automated systems” for registering domain names.

A UDRP panel has found against Oversee.net in a UDRP dispute over CarrollHouse.com and has posed significant questions about the company’s domain name registration practices.

Complainant Carol House Furniture has used its name since 1965 and it incorporated in 1970.

The dispute says that Oversee.net registered the domain on September 4, 2010. But the domain was actually owned by Oversee.net affiliate Portfolio Brains, LLC since 2009.

Oversee.net’s defense to registering the domain name was that an automated system identified the domain name and it registered it because it included two common words. The company told the panel that neither its automated system or three human reviewers raised any red flags about the term being a trademark. It also defended the use of some pay-per-click links on CarrollHouse.com being related to furniture, noting that the act of the complainant accessing the page and clicking on furniture keywords to take screenshots would have increased the prominence of these keywords on the parked page.

The panel found the domain was registered in bad faith and asked two pertinent questions:

1. Why did Respondent choose this particular word string from the universe of words available?

…The Panel did not learn anything from Respondent about the criteria that it programs into its automated system for identifying potential domain names. For example, the criteria in its system might search for word strings that bear similarity to trademarks. The Panel just does not know. Thus, explaining that it uses an automated system does not enlighten the Panel nor relieve Respondent of its responsibility to avoid registering words that infringe on the rights of third parties. That Respondent appears to be relatively savvy when it comes to registering domain names and that it acknowledges its intent to use them for PPC links only heightens the concern in this case.

Respondent claims it had no knowledge of Complainant prior to this dispute, and that during the registration process, neither Respondent’s automated filtering system nor Respondent’s human reviewers identified carrollhouse.com as confusingly similar to a trademark. Respondent does not state whether its filtering system uncovered Complainant’s mark, whether Complainant’s mark came to the attention of the three human reviewers, or whether the reviewers, if confronted with Complainant’s mark, considered the Domain Name unlikely to cause confusion, an assessment that would be different from this Panel’s determination. Does Respondent aggressively choose word strings that risk crossing the line? Again, the Panel is not told anything about the process used by Respondent’s human reviewers. While Respondent denies that it was targeting Complainant, the issue remains open as to whether it was aware of Complainant’s trademark. Is it too much to expect that Respondent should prove that it was unaware of Complainant’s mark, when this evidence is only within the zone of Respondent’s own operations? Given that Complainant’s mark had been used for 45 years, that Complainant had its own well-established website selling furniture, that both parties are located in the United States, and that Respondent is in the business of registering domain names, a finding of constructive notice may not go too far in this case…

2. Why did Respondent’s PPC site feature prominent PPC links for furniture?

…There are at least two plausible alternative explanations for why the website Complainant received when it accessed the Domain Name included furniture-related PPCs as the top links: (i) these terms did not change from the way they first appeared when Respondent uploaded the web page; or (ii) Internet users other than Complainant clicked on furniture-related PPC links on the Domain Name’s web page, placing these links at the top. The Panel does not know the actual reason why Complainant received the web page it did, but the Panel does know that it did receive that page; that it was possible the page included furniture-related PPC links from the day it was uploaded, and that it was possible third parties, not Complainant, searched for furniture or clicked furniture-related PPCs links before Complainant ever did…

Indeed, DomainTools shows that the site has hosted everything from porn links to real estate links. Even after Portfolio Brains bought it there was a parked page with no furniture links on it.