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Intuit missed TurboTaxSucksAss.com

by — Policy & Law 1 Comment

Companies can’t register all domains that can be used to attack them.

Screenshot of TurboTaxSucksAss.com

Patriot Act’s website calls attention to tax prep software company efforts to hide their free options.

Last year, Intuit registered lots of domain names defensively as reports surfaced about its nefarious tactics with TurboTax. It had lobbied the government not to make its own tax filing software by offering to provide a free option. Then it hid its free option, including blocking it from being indexed by Google.

Intuit registered domains like f*ckintuit.com, turbotaxscam.com, and intuitexposed.com to prevent people from using the domains to attack it.

I’ve long argued that these defensive registration exercises are futile. The choices are endless if someone wants to register a derogatory term with a brand in it. Here’s a case in point: Intuit missed TurboTaxSucksAss.com.

Patriot Act with Hasan Minhaj created a website using the domain. It calls attention to the free file options that tax prep companies try to hide.

You can watch the episode covering TurboTax below.

State Farm tries (again) to get a State Farm Bowl domain

by — Policy & Law 0 Comments

The insurance giant really wants this domain name.

Logo for State Farm

Earlier this year, insurance giant State Farm lost a UDRP for the domain name TheStateFarmBowl .com.

The owner of the domain argued that he bought it to sell wooden bowls in the outline of states. Get it? State ‘farm bowls’? (His plans seem to have been delayed because he still hasn’t developed the site.)

This loss came on the heels of losing a similar case for the domain BigStateFarmAgent .com because it could be read is ‘big state’ ‘farm agent’.

State Farm was miffed at losing the seemingly football-themed TheStateFarmBowl .com domain to go along with its defensively-registered StateFarmBowl.com. So it filed a second time with National Arbitration Forum to get the domain.

There are limited cases in which a company can file a UDRP a second time. According to the WIPO Jurisprudential Overview 3.0:

Panels have accepted refiled complaints only in highly limited circumstances such as (i) when the complainant establishes that legally relevant developments have occurred since the original UDRP decision, (ii) a breach of natural justice or of due process has objectively occurred, (iii) where serious misconduct in the original case (such as perjured evidence) that influenced the outcome is subsequently identified, (iv) where new material evidence that was reasonably unavailable to the complainant during the original case is presented, or (v) where the case has previously been decided (including termination orders) expressly on a “without prejudice” basis.

For example, had the owner of the domain started selling insurance, then State Farm might have a legitimate reason to refile. But none of the exceptional circumstances applied here, so the panelist declined to render a new decision.

Supreme Court: Booking.com can get its trademark

by — Policy & Law 21 Comments

Court rules that Booking.com can be trademarked.

Screenshot of header of Supreme Court decision for Booking.com trademark

The Supreme Court of the United States issues its ruling about a trademark for Booking.com.

In an 8-1 ruling, the Supreme Court of the United States ruled today that Booking.com can trademark Booking.com.

For background on the issue, listen to DNW Podcast #285.

Booking.com sought the trademark, only to be rebuffed by the U.S. Patent and Trademark Office, which argued that it’s generic. The USPTO argues that adding .com to a generic term—like adding “Company”—can convey no source-identifying meaning.

The Supreme Court disagreed, writing:

That premise is faulty, for only one entity can occupy a particular Internet domain name at a time, so a “generic.com” term could convey to consumers an association with a particular website.

Furthermore:

Under these principles, whether “Booking.com” is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services. Thus, if “Booking.com” were generic, we might expect consumers to understand Travelocity—another such service—to be a “Booking.com.” We might similarly expect that a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite “Booking.com” provider.

So under limited circumstances, companies can trademark a generic term + .com (or perhaps another top level domain).

But that trademark won’t grant the company protection of the generic term of the second-level domain. Booking.com acknowledged that the Booking.com mark would be weak. It will also not allow it successfully go after anyone who uses the generic term ‘booking’ in their mark.

The court wrote:

Guarding against the anticompetitive effects the PTO identifies, several doctrines ensure that registration of “Booking.com” would not yield its holder a monopoly on the term “booking.”

In fact, Booking.com said it would not go after companies such as ebooking.com, or others that use the term in their name or domain name. It seems that the protection this trademark will provide is against someone, say, promoting themselves as booking.com on their website or naming their hotel Booking.com.

The full decision is here (pdf).

Spa services company tries reverse domain name hijacking

by — Policy & Law 0 Comments

Domain was registered a decade before the spa company started its business.

Picture of masked man with the words reverse domain name hijacking

A spa franchising company has been found to have engaged in reverse domain name hijacking for the domain AccessSpa.com.

Philip Savino, who apparently has some connection to a spa franchiser called Access Spa, filed the dispute with World Intellectual Property Organization.

The owner of the domain name registered it in 2009. Access Spa was created last year, according to the dispute.

It’s impossible that the domain registrant could know that a company was going to use the brand starting ten years later. Therefore, the domain wasn’t registered in bad faith under the Uniform Domain Name Dispute Resolution Policy.

Panelist Warwick Rothnie wrote:

…the long period of several years between the registration of the disputed domain name and subsequent commencement of use of the trademark by the Complainant (and even longer period before registration of the Trademark) should have made it very clear that the Complaint could not succeed. On the record in this case, the Complaint should never have been filed.

I’m struggling with this UDRP decision

by — Policy & Law 17 Comments

Is EveryFamily.org confusingly similar to Everytown?

Blue image with the letters UDRP

I’m having a difficult time digesting a decision in a National Arbitration Forum UDRP.

Everytown for Gun Safety Action Fund, Inc. filed the dispute against the domain EveryFamily.org. The Complainant uses the domain EveryTown.org.

Let me note at the outset that:

1. I’m sympathetic to the Complainant’s cause
2. The domain owner didn’t bother to respond to the dispute
3. It’s possible that the domain owner isn’t legit or is trying to take advantage of the Complainant.

All of that said, I don’t see how you can argue that EveryFamily.org is confusingly similar to Everytown’s mark.

The Complainant says that the EveryFamily.org domain is being used to mislead people into donating to a different group. It claims that the Respondent copied photographs and text from the Everytown.org website.

I wasn’t able to find the copied text and photographs but it’s possible they’ve been removed.

The panelist, Nicholas J.T. Smith, determined that “every” is the dominant part of the Complainant’s mark. He compared it to a case in which the ADP WORKFORCE NOW mark was determined to be confusingly similar to workforce-now.com.

These seem like entirely different levels of confusing similarity.

Smith points to section 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition:

1.15 Is the content of the website associated with a domain name relevant in determining identity or confusing similarity?

The content of the website associated with the domain name is usually disregarded by panels when assessing confusing similarity under the first element.

In some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.

Such content will often also bear on assessment of the second and third elements, namely whether there may be legitimate co-existence or fair use, or an intent to create user confusion.

That’s a fair point.

I just don’t think you can argue that ‘Everytown’ and ‘EveryFamily’ are confusingly similar.

Smith ordered the domain name to be transferred.



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