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The odd inversion of the trademark “rights in gross” conundrum

Sunset, Court Plaza

A courthouse

Is reselling domain names a violation of the UDRP? At his blog, Gerald “Mr. UDRP” Levine lays out the question, and then answers it plain and simple (emphasis mine):

On the question of reselling domain names on the secondary market, a dissenting panelist in a 2005 case observed that “[t]here is no doubt Respondent is in the business of being a reseller of domain names that consist of common English words” and then suggested that the “fundamental question before the Panel is whether or not such a business should be allowed under the UDRP.” He concluded that such a business should not be allowed: “I would … find Respondent has engaged in a pattern of preventative domain name registration through its prior conduct of registering domain names that are identical to third-party marks.” Shoe Mart Factory Outlet, Inc. v. DomainHouse.com, Inc. c/o Domain Administrator, FA0504000 462916 (Nat. Arb. Forum June 10, 2005).

The same panelist (again in dissent) in Randall E. Kay v. Sebastian Kleveros / Comcept – Internet Ventures, FA1602001659119 (Forum March 18, 2016) (<nvrt.com>) states

Reselling domain names does not constitute a bona fide offering of goods or services for the purposes of the UDRP. To allow such an absurd construction would eviscerate the UDRP because every respondent could demonstrate rights by simply offering the relevant domain name for sale to the general public at the time of registration. The UDRP could be easily circumvented.

This exaggerates the consequences beyond recognition; buying and selling domain names is neither absurd nor would it eviscerate the UDRP. In fact, it’s legal.

And now you want to read Gerry’s post where he explains his conclusion.  My observation is just this:   Read More…

There’s NoSpace like home

Originally posted 2008-05-05 18:06:45. Republished by Blog Post Promoter

myspace-logoAt least for MySpace.com, which has lost a key domain name battle in England over the domain myspace.co.uk. According to Bell Denning, solicitors for the respondent:

Both the first and the appeal decisions held that the vast majority of MySpace’s claims had no merit – not least because the UK ISP had legitimately registered the name some 6 years before the social networking site had been formed and the Stockport based ISP had been using it to host numerous websites for clients.

Instead argument centred on the most recent use of the domain as a Pay Per Click website, hosting adverts for other websites that users could link to by clicking on them. . . . [The panel] held there was “insufficient material” to uphold MySpace Inc.’s allegations.

Of more general interest was the second main point covered – namely whether parking use that started as legitimate could become abusive when the nature of the adverts hosted changed due to the sudden fame of a third party. In this case the adverts changed to reflect the fame of MySpace.com, but that had happened automatically as a result of the algorithms used by parking company Sedo. MySpace Inc. claimed TWS should have exercised control over the content of the adverts. No, said TWS – that is not a change of use. Read More…

Who’s yer daddy?

Originally posted 2012-08-06 17:28:25. Republished by Blog Post Promoter

GoDaddyMarc Randazza does a great job in explaining, and suggesting at least one answer to the question, “Is GoDaddy a Cybersquatter?”

Generic genericness

Originally posted 2013-06-18 10:42:49. Republished by Blog Post Promoter

IntersessionWhat is “generic genericness”?  I just coined the phrase.  It refers, I maintain, to a genericness defense against infringement made by the junior user of a trademark where the English word on which the defense is premised doesn’t, well, exist, but the defendant maintains that the mark is so generic-y — i.e., so much like other words that really do exist — that it should be treated as generic anyway.

It is an intriguing argument, generically speaking.  But, it seems, a losing one, at least in this UDRP case reported by Gerald Levine:

Trademarks gather strength as they ascend the classification scale. In order, fanciful, arbitrary and suggestive are at the strong end of the scale, while descriptive and generic (if they qualify for registration) are on the weak end. The registry of trademarks includes numerous well-known dictionary words used fancifully or arbitrarily – think fruit: “apple”, “blackberry” and “orange”; or common words combined such as “micro” and “soft” and “America” and “Online.” More common words used descriptively have qualified when by their presence in the marketplace they have achieved secondary meaning. Whether domain name registrants are cybersquatting on the trademark depends on a number of factors that are discussed in Imagine Solutions, Inc. v. Encapture.com, Privacy Services / Ravindra Kumar Lahoti, D2013-0268 (WIPO April 17, 2013). In this case, the domain name, is identical to the Complainant’s trademark.

Could it be generic? Yeah, maybe, possibly.  Depends, perhaps, on how many drinks you’ve had.  Either way, however, it’s a problem making this argument after someone else has already coined the term ENCAPTURE and is using it as a trademark:

Respondent argued that “encapture” is a common word. While “en” is a familiar prefix in English, “enthrone”, “enrapture,” “entangle” etc. it does not work with “capture.” “Capture” is a common word, but not “encapture.” What would the word mean? To Respondent the prefix is a substitute for “to ”, but that would violate standard usage. “En” may mean “to put on” (“enthrone”), indicate intensification of an emotional state (“enrapture”), or cause something or someone to become more caught up in (“entangle”). The Panel notes that “Respondent has alleged that the term ENCAPTURE is generic in the sense of describing ‘to capture’. . . .

In other words, Complainant has created a non-word that looks as though it could be a word because it appears to have been properly formed, but in fact its validity to English speakers (as with the fruit examples) depends solely on its use in the marketplace. It works only on the symbolic, not the grammatical level. The Complainant established that the manner in which Respondent was (or had been) using the domain name disqualified it as having a right or legitimate interest in it. While that alone does not establish abusive registration it is certainly consequential in supporting a conclusion that Respondent chose the domain name to take advantage of the trademark.

You might say he tried to “encapture” the goodwill of the markholder, which the UDRP, in its trademark-like way, forbids.  You could say it — but you wouldn’t be talking English.  There’s no such thing, see, as generic genericness.

dot… Pineapple?

Originally posted 2013-04-01 00:01:28. Republished by Blog Post Promoter

LoC got wind—and then a copy—of this letter, dated as of the date of this post, to ICANN in support of the creation of a new top-level domain. Further updates as events warrant.

An excerpt:

Abstract

The undersigned respectfully present this white paper to the Internet Corporation for Assigned Names and Numbers (ICANN) in order to advance the case for the creation of a new top-level domain (TLD), to wit: “.pineapple.” The creation of such a TLD would without question help resolve the longstanding debate over what Internet content is pineapple-related, and thereby aid service providers in discharging their responsibility under the Tropical Plant Communications Act of 1996.

View the entire white paper here.

 

Merchant of Baloney

Originally posted 2014-10-26 19:37:36. Republished by Blog Post Promoter

Hilarious posting on John Welch’s TTAB Blog about what looks like PTO connivance in the wild and wacky career of would-be trademark king Leo “Likelihood of Derision” Stoller.

There is a Merchant of Venice restaurant out there, though, John. Doesn’t sound so kosher, but I wonder what they charge for the quarter-pounder of flesh?

“Domain Name Arbitration”: An Old Testament for a New Body of Law

DNA-cover-front-final

The new UDRP Bible.

Internet law, “we” used to say, is a young man’s game.  We stopped saying it though — not because political correctness mandates that we say “young person,” though it does.

But no, “we” stopped saying it when we got old.  Wine ages well, but do lawyers?

Funny you should ask.

Now what we say (and we say it in all sincerity) is that lots of young lawyers get the Internet, but they’re still only young lawyers. On the other hand, an old, experienced, battle-scarred, been-there-done-that lawyer who also gets the Internet?  That’s a lawyer you hire!

I mean me, of course.  But how can I stand before Gerald M. Levine, master of UDRP domain name arbitration, who has just released the definitive guide to that topic?  It’s called Domain Name Arbitration: A practical guide to asserting and defending claims of cybersquatting under the Uniform Domain Name Dispute Resolution PolicyIt’s self-published, just like LIKELIHOOD OF CONFUSION, which means it’s a lot less expensive than if it were somebody-else published.  But it’s a darned fine book of words all the same.

That’s no surprise. Gerry Levine has been at this for a while; he was admitted to practice in New York the year I became a bar mitzvah.  That could in theory make him only little more than ten years older than your blogger, which is, yeah, old, for an “Internet lawyer.”  But actually Gerry’s way older than that — before law school Gerry he had already received a Ph.D in English Literature from NYU and taught for several years at Queens College at City University in New York.

Gerald M. Levine UDRP Expert

Veteran, yes, but not half as crusty as your blogger.

While I’m not sure why Gerry, who had been practicing litigation and ADR and working as an arbitrator for years before there was even such a thing as an Internet — heck, it may even have predated Al Gore’s bar mitzvah! — decided to develop a focus on UDRP practice in the middle of his second career, I’m glad he did. Read More…

Susan Crawford: Why I Voted For XXX

Originally posted 2007-03-31 23:09:23. Republished by Blog Post Promoter.

Susan Crawford explains, at considerable length, why she voted with the minority at ICANN on the defeated proposal to open up a “xxx” new domain registry for dirty Internet websites:

I continue to be dissatisfied with elements of the proposed xxx contract, including but not limited to the “rapid takedown” provision of Appendix S,[1] which is manifestly designed to placate trademark owners and ignores the many due process concerns that have been expressed about the existing UDRP.

XXXI mean, there are a whole lot of other issues here, and you should read her and other comments on why this vote went this way and what it means for Internet governance, which I for one care little about. I can barely govern myself. But I do find her reference to the influence of Big IP pretty interesting.

My proposal, by the way: I’d already herd the 5% of non-pornographic websites into a ghetto ending in, I don’t know, “.ok.”

Best of 2007: Tastefully done

Posted on July 20, 2007.

Brett Trout has a primer on “domain tasting” and its unsavory accompaniments. This is one of the “emerging issues” — just when I thought domain names were yesterday’s appetizer.

Domain tasters are a boon for those unpleasant uninvited companions, cybersquatters. They will devour your trademark — unless you pick up the check. Very poor taste, indeed.

The domain game

I don’t do enough domain-name dispute resolution work under the UDRP to even pretend to be a UDRP maven, but I do know a couple of them, and one of them is Paul Raynor Keating.  Paul is a redoubtable and erudite contributor to the e-Trademarks list and pretty much “the guy” for domain name litigation in the EU, or at least if your main language is English.  (Oddly enough, but entirely characteristically, if Paul “has a webpage” at which he flogs his services to the world the way, um, certain others of us do, I’ve never been able to find it; hence, no official link to him.  But here’s his stuff.)

Paul is very animated these days about what he describes as abuses of the UDRP system, and has taken to the Intertubes, big time, to promote his thesis.  Two articles have appeared under his byline in the last couple of days and in a number of venues, and I am excerpting them here and providing links so we can all figure out what’s going on out there.

The first piece is entitled, “Why UDRP Panel Certification is Important: HardwareResources.org,” published in TLD Magazine, in which Paul explains:

Although the UDRP has functioned for over a decade, the evidence continues to mount in favor of a certification process so all can be assured that panelists have the proper legal knowledge and address claims seriously. Examples abound of panel errors but I have seen few that competes with the likes of Hardware Resources, Inc. v. Yaseen Rehman, Claim Number: FA1201001423229 (HardwareResources.org), a recent decision by NAF-favored panelist Atkinson (see the related study by Zak Muscovitch).

In Hardware Resources, the panelist was so absorbed with the Complainant’s assertions that he failed to examine even the most basic aspects of the claim. . . .

Mr. Atkinson next finds bad faith because Respondent offered to sell the domain to the Complainant for a whopping $40.00. Surely this is a joke. . . . While it is possible that $40.00 was more than the out-of-pocket costs, the rule in this regard is tied to the concept of targeting and registering domain names for the purpose of holding them ransom to a known trademark holder. This case fails the mark by any stretch and by even mentioning the issue Mr. Atkinson opens both himself and the UDRP process to ridicule.

Yet again showing his preference for complainants, Mr. Atkinson finds bad faith registration based upon PPC [pay per click] use with websites that “have featured pay-per-click links, some relating to Complainant’s competitors and some being simply generic” and some that “displayed information about Complainant“. Mr. Atkinson thus finds that the respondent must have registered the domain “to attract consumers and create confusion for its own profit“. This is lumped together with the $40-issue to support a finding of bad faith. . . .

It is telling that the only reference to “generic” was in the Complainant’s allegations. The panelist certainly does not mention the word or deal at all with the descriptive nature of the phrase at issue. The use of a descriptive domain for descriptive purposes has repeatedly been found both legitimate and in good faith. It has long been held that the foundational issue is whether the respondent “targeted” the complainant. Here, the Complainant had no trademark in “Hardware Resources”. The domain was used for – guess what – PPC links related to items long considered to be hardware-related. That Complainant may have appeared in any of the PPC links is the fault of the Complainant who voluntarily selected a less-than-stellar trademark.

The most important lesson to be learned here, however, is not that Mr. Atkinson should abstain from being involved in the UDRP process. The important lesson is that decisions such as these destroy the carefully structured balance of the UDRP process as a whole. Respondents are repeatedly told that they can legitimately register and use domain names for descriptive purposes. It instills little confidence in the “system” when panelists such as Mr. Atkinson issue ill-thought out opinions such as this one.

While panelists aren’t earning the salaries of bankers in New York, this case shows that 20 seconds of thought would have produced the correct result. . . .

And, $40 for a domain name? I am not sure who was being sillier; the panelist in using this as bad faith or the respondent who thought it was a good idea to make the offer.

There’s more:  The second article is called “Abusive Supplemental Fillings” and can be found at both Domain News and The Domains and probably a bunch more places. Excerpt:

The recent decision in autoownersinsurance.com is a perfect example of things going from worse to horrible. While the decision itself contains many substantive flaws, my overwhelming issue is with the lack of due-process rights evidenced by this UDRP. Read More…