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Doh! State Bar of California loses cybersquatting dispute

by — Policy & Law 1 Comment

Organization that oversees California lawyers let domain expire and loses cybersquatting challenge to get the domain back.

The State Bar of California let the domain calsb.org expire and failed to get it back in a UDRP.

The State Bar of California–the group responsible for admitting attorneys to practice in California–has shown its member how not to argue a cybersquatting dispute.

The organization let one of its domain names, Calsb.org, expire last year. It first registered the domain name in 1996.

It filed a cybersquatting complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) with National Arbitration Forum in an effort to get the domain back. In the dispute, it failed to persuade panelist Debrett G. Lyons that the Calsb.org domain name is confusingly similar to a mark in which the Bar has rights.

The State Bar of California has a registered trademark for “The State Bar of California” and claims that it has unregistered trademark rights in “California State Bart” and “Calsb”. Lyons determined that the domain name is not confusingly similar to the first two and calsb could stand for many things.

Regarding unregistered rights to Calsb, Lyons was unconvinced by the evidence the Complainant submitted.

The Bar previously won a UDRP in 2001 for CAStateBar.com and in 2005 for CaliforniaStateBar.com. Its official website is calbar.ca.gov.

Calsb.org was purchased in a GoDaddy expired domain name auction last year for $676. This morning the domain name forwarded to a zero click parking page for a scam security warning.

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UDRP has its limits when it comes to taking down counterfeit websites

by — Policy & Law 0 Comments

Even if the domain owner is doing a bad thing, UDRP can only be used if all three prongs of the policy are met.

This website looks like that of Zimmermann, even showing a picture of one of its storefronts. It’s a fake, but UDRP isn’t the appropriate way to take it down.

The Uniform Domain Name Dispute Resolution Policy (UDRP) is a good tool to take over cybersquatted domain names. These names are often being used for nefarious purposes such as phishing or selling counterfeit goods.

One such case involving counterfeit goods that was just decided by National Arbitration Forum shows the limits of using UDRP to take down a site: you still have to prove that the domain is cybersquatting under the three prongs of UDRP.

The case was filed by Australian clothier Zimmermann Wear Pty Ltd against ZimOutlet(.)com. There’s no question that the domain owner is up to no good. The site is made to look like the clothing company and is allegedly shipping counterfeit goods when someone orders.

The problem is that Zimmermann and Zim aren’t that similar. Panelist David E. Sorkin did a good job comparing this case to others in which only part of the trademark was used in the domain: Click here to continue reading…

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Talking UDRP with Gerald Levine – DNW Podcast #201

by — Podcasts 1 Comment

The author of a book about UDRP discusses cybersquatting dispute trends.

dnw-podcastGerald Levine literally wrote the book on UDRP. His book Domain Name Arbitration is the bible for domain name lawyers. On today’s show, Levine discusses some of the trends he’s seeing in UDRP cybersquatting disputes.

Also: Abry gobbles up Donuts, Namecheap hits 10 million, CentralNic’s purchase, and Google says URLs suck.

Podcast: Play in new window | Download (Duration: 33:48 — 27.1MB) | Embed

Subscribe: Apple Podcasts | Android | Email | RSS

Subscribe via iTunes to listen to the Domain Name Wire podcast on your iPhone or iPad, view on Google Play Music, or click play above or download to begin listening. (Listen to previous podcasts here.)

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Defunct app maker hit with reverse domain name hijacking

by — Policy & Law 2 Comments

App maker files UDRP and then shuts down its business.

The maker of a now-defunct app called Yish has been found to have engaged in reverse domain name hijacking over the domain name Yish.com.

The company used various domain names including yishapp.com, yish.co, yish.app, yish.io and yish.menu. It understandably wanted Yish.com, but that domain was registered by Kevin Ham’s Vertical Axis back in 2001. Yish didn’t file for a trademark and began using the term until 2017.

You can understand why the panel found the app maker to have filed the case in bad faith. But this case is a bit odd: before the decision was reached, the app maker informed World Intellectual Property Organization that it was shutting down its business and asked the panel to terminate the case.

Knowing that it had a slam dunk case and likely reverse domain name hijacking, Vertical Axis (now called Blue Nova) objected to terminating the case. Therefore, the panel completed its review and found reverse domain name hijacking.

Blue Nova was represented by ESQwire.com.

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You need to hire a specialist lawyer for domain name disputes

by — Policy & Law 0 Comments

Another example of a UDRP case gone wrong that might have gone the other way with different arguments.

“Maybe we should read Gerald Levine’s book about UDRP before filing.”

Would you hire a personal injury lawyer to file a trademark application? I hope not. You should hire an attorney who specializes in trademarks.

When it comes to cybersquatting claims, it’s important to hire someone who has direct experience with the Uniform Domain Name Dispute Resolution Policy. It’s not enough to even hire an intellectual property or trademark specialist.

There’s a lot of nuance to UDRP, and if you hire someone who’s not an expert in cybersquatting, your results will vary. You’ll also likely pay that person to research stuff that other lawyers already know.

I was reminded of this in a case just decided at National Arbitration Forum. Geo Global Partners, LLC failed to win its case against Gardenique.com, and it’s possible the outcome would have been different if the case was argued differently.

The case mostly hinged on dates. The domain was registered in 1996. Geo Global Partners’ attorney tried to argue common law rights but not did make arguments sufficient enough to qualify in a UDRP case. Furthermore, even the common law rights claimed were after 1996.

Here’s the thing: based on historical Whois records at DomainTools, it appears the current owner of the domain acquired it in late 2016 or early 2017. That changes things.

Perhaps the Complainant still would have lost for other reasons. But it’s a reminder that you should hire counsel that is experienced with the type of proceedings you are filing. Someone who has filed or defended many cases and has read many more to understand the nuance of these cases.

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