Cybersquatting cases hit record in 2008
From Reuters
GENEVA (Reuters) - Companies and celebrities ranging from Arsenal football club to actress Scarlett Johansson filed a record number of "cybersquatting" cases in 2008 to stop others from profiting from their famous names, brands and events, a United Nations agency said on Sunday.
Web sites in dispute in 2008 included references to Madrid's 2016 Olympics bid, the British Broadcasting Company (BBC), Yale University, Research in Motion's Blackberry as well as Arsenal and Johansson, and company names such as eBay, Google and Nestle.
The most common business sector in which complaints arose was pharmaceuticals, due to websites offering sales of medicines with protected names. Other top sectors for complaints were banking and finance, Internet and telecommunications, retail, and food, beverages and restaurants.
The World Intellectual Property Organization (WIPO) handled 2,329 cases under its dispute procedure for Internet page names.
The Internet Corporation for Assigned Names and Numbers (ICANN), which manages the system of Web addresses with endings like .com and .gov, is preparing to launch many new series of suffixes.
These new generic top-level domain names (gTLDs) will allow a vast increase in the number of Web addresses, providing new scope for trademarked names to be abused -- or at least making it harder for the trademark owners to monitor them.
"The creation of an unknowable and potentially vast number of new gTLDs raises significant issues for rights holders, as well as Internet users generally," WIPO Director-General Francis Gurry said in a statement.
The founder of the World Wide Web said on Friday the names system had become mired in politics and commercial games.
"It would have been interesting to look at systems that didn't involve domains," Tim Berners-Lee, who drafted a proposal 20 years ago that led to the Web, told an anniversary celebration.
Gurry said his U.N. agency was working with ICANN, a not-for-profit corporation based in California, on "pre- and post-delegation procedures" to check the proposed new suffixes and help avoid future litigation.
For instance a new suffix ".apple" could well upset the computer, phone and entertainment company Apple.
How such suffixes are used and by whom would be important -- a fruit-growing company using the .apple suffix would not have the same effect as a company registering a Website "ipod.apple."
Gurry told a news conference that trademarks that had no other meaning, such as Sony and Kodak, were stronger and easier to defend than those based on general words or names, which could be ambiguous.
(Reporting by Jonathan Lynn; Editing by Laura MacInnis)
© Thomson Reuters 2009 All rights reserved
Monday, March 30, 2009
Registration of domain name not proof of common law trademark.
Registration of domain name not proof of common law trademark
Buying a domain name does not constitute a right or legitimate interest in the domain name
It is, of course, well known that a Complainant in a UDRP proceeding must establish a trademark. It is equally well known that the trademark may be a registered one, which it usually is, or a common law or unregistered one.
But if the trademark relied on by the Complainant is a common law or unregistered trademark, it must be proved by evidence satisfactory to the panellist.
It is not enough to assert these issues; they must be proved.
A recent case re-enforces this principle and shows that Complainants sometimes fail in proving this point.
The case was Alexey Kistenev v. Jinsu Kim
Case No. D2008-1870 decided on 2 March 2009 and concerned one of a growing number of valuable domain names formed around the expression Bit Torrent, in this case, which the Respondent had bought for USD 17,500.
The Bit Torrent process as the panellist in this case described it is:
“…software and services designed to help users locate and download torrent files (files based on a peer-to-peer file sharing protocol initially developed by BitTorrent). “
The Complainant claimed that it owned another domain name, and that this gave it trademark rights sufficient to mount its claim for .
Not so, said the panellist.
“ The Complainant argues that it owns and has used the domain name, and that there are many visitors to this site. However, the mere use of a domain name, even if assumed for a long period of time and with many visitors, does not necessarily give rise to a trademark right. For example, the site found at “www.cars.com” appears to be extremely successful and has been in service for quite some time, but related trademark applications have been denied registration before the United States Patent and Trademark Office. The provided record and submissions in the proceeding are in this Panel’s view insufficient to establish that the Complainant has the requisite rights to the claimed TORRENTREACTOR mark. Perhaps if the provided record had contained stronger evidence of the claimed mark having acquired secondary meaning as an identifier of the Complainant’s goods and services, the outcome might have been different. The onus is ultimately on the Complainant to make its case, particularly in relation to the threshold issue of rights in a mark, and here the Complainant has not succeeded in doing so. If the Complainant is confident that he has rights in TORRENTREACTOR, the Panel suggests that he obtain a trademark registration, which would put many of the related issues to rest.”
So the claim failed because the Complainant could not prove the first of the 3 UDRP elements.
Goodbye $17, 500.
The panel went on to consider the other 2 UDRP elements.
The Respondent had claimed that he had a right or legitimate interest in the domain name because he had bought it,
Not so, said the panellist:
“The Respondent’s assertion that he has a right or legitimate interest in the disputed domain name because he paid USD17,500 for it in an auction is not particularly relevant. Domain names are often traded and auctioned off for profit depending on the amount of traffic associated with it, and it is often the case that domain names that are confusingly similar to an already operating domain name or existing trademark fetch a higher price among cybersquatters and domain name traders.”
There would also have been a finding of bad faith against the Respondent.
Thus, although the Respondent failed on the second and third elements, the Complaint was denied as the Complainant had failed on the first element.
Buying a domain name does not constitute a right or legitimate interest in the domain name
It is, of course, well known that a Complainant in a UDRP proceeding must establish a trademark. It is equally well known that the trademark may be a registered one, which it usually is, or a common law or unregistered one.
But if the trademark relied on by the Complainant is a common law or unregistered trademark, it must be proved by evidence satisfactory to the panellist.
It is not enough to assert these issues; they must be proved.
A recent case re-enforces this principle and shows that Complainants sometimes fail in proving this point.
The case was Alexey Kistenev v. Jinsu Kim
Case No. D2008-1870 decided on 2 March 2009 and concerned one of a growing number of valuable domain names formed around the expression Bit Torrent, in this case
The Bit Torrent process as the panellist in this case described it is:
“…software and services designed to help users locate and download torrent files (files based on a peer-to-peer file sharing protocol initially developed by BitTorrent). “
The Complainant claimed that it owned another domain name,
Not so, said the panellist.
“ The Complainant argues that it owns and has used the domain name
So the claim failed because the Complainant could not prove the first of the 3 UDRP elements.
Goodbye $17, 500.
The panel went on to consider the other 2 UDRP elements.
The Respondent had claimed that he had a right or legitimate interest in the domain name because he had bought it,
Not so, said the panellist:
“The Respondent’s assertion that he has a right or legitimate interest in the disputed domain name because he paid USD17,500 for it in an auction is not particularly relevant. Domain names are often traded and auctioned off for profit depending on the amount of traffic associated with it, and it is often the case that domain names that are confusingly similar to an already operating domain name or existing trademark fetch a higher price among cybersquatters and domain name traders.”
There would also have been a finding of bad faith against the Respondent.
Thus, although the Respondent failed on the second and third elements, the Complaint was denied as the Complainant had failed on the first element.
Wednesday, March 11, 2009
$US 5.1 MILLION FOR A DOMAIN NAME
$US 5.1 MILLION FOR A DOMAIN NAME
The US toy firm TOYS R US has just paid $US 5.1 million for the domain name toys.com.A high price, but not a record.
See the whole story at http://news.bbc.co.uk/2/hi/technology/7923433.stm.
The US toy firm TOYS R US has just paid $US 5.1 million for the domain name toys.com.A high price, but not a record.
See the whole story at http://news.bbc.co.uk/2/hi/technology/7923433.stm.
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