Displaying posts tagged under "world intellectual property organization"
Financial services company and rating agency can’t have “boycott” domain name, panel rules.
Standard & Poor’s has lost a UDRP against the domain name BoycottStandardandPoors.com at World Intellectual Property Organization.
The domain name owner argued that he’s exercising his first amendment rights by owning the “gripe” style domain name.
The panel determined that the domain name could be used as a gripe site and be protected, so it denied Standard & Poor’s request to transfer the domain name.
But the panel’s wording – and the brevity of its decision – is rather interesting.
Consider that the domain owner registered the domain name in 2011, but hasn’t done anything with it. The panel gave the benefit of the doubt on whether or not he did not have rights/legitimate interests in the domain name:
As Respondent conceivably could use the domain name at issue in a manner that would not constitute bad faith registration and use, and as the domain name at issue has yet to be used to resolve to a web site, Complainant has failed to establish that Respondent has no rights or legitimate interests in respect of the domain name at issue.
The section for Registered and Used In Bad Faith is also peculiar. The three person panel says the complaint was brought prematurely “Since it is conceivable that Respondent could use the domain name in such a way that Respondent did not seek to profit from the good will attached to Complainant’s family of marks.” The panel then notes that S&P can file another UDRP should the domain owner use the domain name in bad faith.
It’s rare that a panel considers what is conceivable, and it’s surprising they didn’t address the lack of progress in turning the domain into a non-commercial website.
I’m not saying the panel got it wrong, it’s just that the full decision is rather interesting. I think some panels would have found differently.
WIPO decides not to accept late response to objection.
World Intellectual Property Organization has made a determination that it will not accept a late response to a Legal Rights Objection against .axis, thereby effectively killing off Saudi Telecom Company’s bid for the top level domain.
Axis Communications AB filed the objection against the .axis application. Saudi Telecom then submitted its response to the objection too late.
This resulted in ICANN Ombudsman Chris LaHatte getting involved. He issued an opinion to ICANN’s board, requesting that the Board ask WIPO to reconsider its stance of strictly adhering to the deadlines. LaHatte wrote that accepting the response to the objection “is a fairer result, than letting the [applicant’s] effort over a number of years and the considerable expenditure be wasted by a formalistic approach to the time deadline.”
The board then contacted WIPO, which in turn asked ICANN if it wanted WIPO to accept the response or not. ICANN wouldn’t say; It said it just wanted WIPO to come to a determination.
As it related to LaHatte’s opinion, WIPO notes:
…contrary to what is stated in the ICANN Ombudsman’s report, the LRO procedure, including notably the sanction introduced in Article 11(g) of the Procedure, was not established by the WIPO Center but by ICANN. Also contrary to what is stated in the report, the WIPO Center had neither at that time refused the Applicant’s response, nor accepted it, but had rather suspended action in the proceeding to seek guidance from ICANN. The WIPO Center has further noted that the report indicates that for the purpose of the report the Ombudsman contacted the Applicant, and that the report makes no mention of contact with the other party.
WIPO says it informed Saudi Telecom multiple times of the deadline. At the end of the day, the “WIPO Center simply finds insufficient basis to accept the late-filed response”.
Unlike in a UDRP, with a Legal Rights Objection the failure to respond results in an automatic win for the objector. This means .axis is effectively dead unless ICANN takes the matter up again. No other companies applied for .axis.
The only other Legal Rights Objection that had been hanging out there was .zone, filed by AutoZone against Donuts. AutoZone ended up terminating its objection. I have no doubt it would have lost its objection.
The final result from Legal Rights Objections: Objectors won 5 cases (if you include .axis), Applicants won 59, and 5 cases were terminated.
WIPO’s online reporting functionality beats its competitors.
I write a lot of articles bashing decisions made by World Intellectual Property Organization (WIPO) panelists in UDRPs. So I think it’s only fair that I give the group props when it’s deserved.
The new top level domain name objection process has reminded me how WIPO’s online reporting systems are way, way better than the competition.
Three organizations are handling top level domain name application objections. WIPO is handling legal rights objections, The International Center of Expertise of the International Chamber of Commerce (ICC) is managing both community and limited public interest objections, and The International Centre for Dispute Resolution (ICDR) has string confusion objections.
Of the three, only WIPO has decent online reporting of cases filed and decisions.
Seriously? Have they never heard of databases? I’d even take a spreadsheet over this. Maybe they could take some of the millions they’re bringing in for objection fees and hire a web developer.
ICDR is not much better. The group apparently has a couple different websites, and for a while ICANN was linking to a page that suddenly went missing.
Its cases are also in a PDF, but at least it’s a much shorter table format.
Usability is missing. Once you get to the ICDR objection information page, you have to click on a inconspicuous link in the lower right hand corner to view the list of objections. Then it brings you to a splash page where you have to click another link to see the actual document.
It appears that whatever content management system they’re using generates pages on the fly, too.
The actual decisions are linked to within the PDF, and they open up another PDF file. For a while the hyperlinks weren’t blue, and it wasn’t clear that you could actually click them to see the full decision.
And don’t get me started on the infrequent updating of the ICDR’s spreadsheet. WIPO updates daily.
WIPO’s superior online reporting is also present in UDRP. WIPO’s main competitor, National Arbitration Forum, has far inferior online reporting and searching capabilities.
I’ll continue to bash poor UDRP decisions, but new TLD objections have reminded me that WIPO has something good going for it.
Del Monte International uses cybersquatting and UDRP rules in attempt to overturn .delmonte objection.
Yesterday I wrote about Del Monte International (DMI) Gmbh’s lawsuit against Del Monte Corporation (DMC) after the latter won its objection to the former’s application for the .delmonte top level domain.
The court has now published the complaint (pdf).
On the surface, I understand the complaint. DMI is trying to argue that the World Intellectual Property Organization (WIPO) panel made the wrong decision. But how DMI positions the complaint is, well, weird.
It appears that DMI took a lawsuit that’s filed when someone loses a UDRP and wants it overturned and just changed it to read “Legal Rights Objection”.
The complaint for declaratory relief asks the court to say that DMI is not in violation of the Anti-cybersquatting Consumer Protection Act by seeking to register the TLD .delmonte (huh?) and to order DMC to withdraw its (already closed) Legal Rights Objection against DMI.
DMI then goes on to claim the U.S. District Court in Central District of California has jurisdiction over the case using UDRP’s “mutual jurisdiction” guidelines.
In a UDRP, the complainant has to agree to submit to the jurisdiction of either the domain owner’s location or his/her registrar, should the respondent file suit as a result of case. The complainant elects one of the jurisdictions when it files the case.
So DMI said that WIPO has stated that UDRP rules apply to new gTLDs (hmmm) and that “jurisdiction is proper in this court, because the Registrar with whom the Application was filed, the Internet Corporation for Assigned Names and Numbers (“ICANN”), is located in Marina del Rey, California…”
See what I mean? Weird. Creativity points at a minimum.
The rest of the complaint describes why DMI believes why the WIPO panel decision was “manifestly erroneous”.
It may be right, although filing a lawsuit may not overturn the objection.
Some take-aways from WIPO’s first three legal rights objection decisions.
WIPO has published the results of three legal rights objections for new TLDs. Objectors to .home, .vip, and .rightathome all lost their cases.
Here are eight observations from the first three cases.
Hey there, WIPO UDRP panelists!
The first three decided legal rights objections were handled by some familiar names if you follow UDRP proceedings. Tony Willoughby was the panelist for .vip, Robert A Badgley handled .rightathome, and M. Scott Donahey decided .home.
Nice try gaming the system
Remember all those companies that tried to get trademarks on new TLDs from the U.S. Patent and Trademark office?
The USPTO said no, but applicants went to other jurisdictions to try to “front run” the new TLD process.
So far, panelists are on to this. They’re calling B.S. on applicants’ assertions that they were actually using these marks in commerce and not just acquiring them to get a leg up on new TLDs.
In the .home case, the panelist even reconstructed the timeline of trademark filings and the new TLD program to show how questionable the objector’s claims were.
Oh, and remember how you didn’t fool the USPTO with your Wild West Domains reseller accounts? Apparently panelists at WIPO aren’t that dumb, either.
Officially, there’s no such think as Reverse TLD Application Hijacking?
I believe that most legal rights objections will fail. There’s no equivalent of reverse domain name hijacking for these objections, but two of the first three decided cases (.home and .vip) are certainly candidates.
The good news for new TLD applicants: unlike with UDRP, the loser pays in new TLD objections.
Is this the start of new TLD lawsuit season?
I-Registry Ltd. filed five objections for .vip. It also applied for the string, so it has a lot invested.
It lost its first .vip objection and will likely lose the others.
With that in mind, will I-Registry Ltd. decide to sue to try to push the issue?
I don’t know I-Registry well, but I know some other applicants who are upset that others had the same idea as them for new TLDs and are sure to use every available means to try to capture their prize. Even if they ultimately lose, it will frustrate other applicants.
We don’t yet know if decisions will be consistent.
Speaking of .vip, what would happen if a panelist found in I-Registry’s favor in a later case? I suspect WIPO put the same panelist on all .vip cases. But since this is a new process, we are bound to see decisions by some panelists that conflict with the rationale used by other panelists on different new TLD strings.
WIPO is on the ball
You might argue that legal rights objections will be easier to handle than the other types of objections. Still, that WIPO is the first of three new TLD objection forums to turn in results isn’t too surprising. I think the other forums are still trying to understand domains. One is even in hot water for some rather egregious fee estimates.
WIPO is including its objection decisions in its daily WIPO mailings.
UDRP junkies like me get WIPO’s daily digest of decisions. New TLD objections are included. So if you want to stay on top of these objections, you can subscribe to its mailing list.
Like with UDRPs, there are process objections
Both parties to UDRP often complain about the other party filing unrequested supplemental filings. The same goes for new TLD objections, as the parties disagree on whether additional information can be submitted after the fact.