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.
Wednesday, February 18, 2009
Can your website include a link to another website?
The Cleveland Plain Dealer, 11 February 2009, reports the settlement of a claim brought by law firm Jones Day against a small internet site.
The clain sought to stop the site from including links to lawyers in Jones Day to follow up their real estate purchases,which was the activity in which the internet site engaged.
The court action had brought criticism on the grounds that it was a regular practice of the internet to contain links to other websites and that this was inportant from the dissemination of information and for free specch.
The case has now been settled and the internet site will be allowed to continue to have links to the Jones Day lawyers, but must do so by using the firm's web address as, for example, in www.jonesday.com/dpmalone.
The Cleveland Plain Dealer report is, in part , as follows :
" BlockShopper posts information from public records on residential sales in 11 U.S. markets. It adds to that brief articles about transactions involving lawyers, doctors and other buyers and sellers whose names show up in Google searches.
Jones Day sued BlockShopper in August after it posted articles about Dan Malone Jr. and Jacob Tiedt, lawyers at its Chicago office who had recently bought condos. The articles linked to the lawyers' profile pages on the firm's 2,300-attorney site.
Jones Day asserted that the links could give viewers the mistaken impression that it endorsed BlockShopper or was affiliated with it.
Critics scoffed, saying that Jones Day's position was an attack on Blockshopper's First Amendment rights and jeopardized the common practice of linking from one Internet site to another.
...BlockShopper ... offered to "make the link more literal" by including the law firm's Web address -- the terms agreed to this week, ( BlockShopper) said.
...Under the settlement,... BlockShopper can publish links to Jones Day but they can't be "embedded links." Those are defined as hyperlinks that are placed on a word or name.
Instead, BlockShopper will have to place the Web address next to references to the firm. In other words, instead of writing Daniel P. Malone Jr. is an associate in the Chicago office of Jones Day," BlockShopper must write "Malone (www.jonesday.com/dpmalone) is an associate . . ."
BlockShopper is permitted to use "deep links" to any Jones Day site. Those are links that directly access a specific page beyond the home page, such as attorneys' biographical pages.
While the settlement may seem like a fig leaf, it still rankles digital rights proponents who say BlockShopper did nothing illegal.
...Paul Levy, a lawyer with the consumer group Public Citizen, encouraged people to "replicate the lesson to Jones Day" by posting hyperlinks to the firm "as a way of daring, 'Big boy, try it again.'"
While the case was pending, BlockShopper agreed to remove links to the condo-buying associates in Chicago.
Now those postings will go back up, along with listings of property transactions by other Jones Day lawyers, (BlockShopper) said. "
With acknowledgement to The Cleveland Plain Dealer.
The clain sought to stop the site from including links to lawyers in Jones Day to follow up their real estate purchases,which was the activity in which the internet site engaged.
The court action had brought criticism on the grounds that it was a regular practice of the internet to contain links to other websites and that this was inportant from the dissemination of information and for free specch.
The case has now been settled and the internet site will be allowed to continue to have links to the Jones Day lawyers, but must do so by using the firm's web address as, for example, in www.jonesday.com/dpmalone.
The Cleveland Plain Dealer report is, in part , as follows :
" BlockShopper posts information from public records on residential sales in 11 U.S. markets. It adds to that brief articles about transactions involving lawyers, doctors and other buyers and sellers whose names show up in Google searches.
Jones Day sued BlockShopper in August after it posted articles about Dan Malone Jr. and Jacob Tiedt, lawyers at its Chicago office who had recently bought condos. The articles linked to the lawyers' profile pages on the firm's 2,300-attorney site.
Jones Day asserted that the links could give viewers the mistaken impression that it endorsed BlockShopper or was affiliated with it.
Critics scoffed, saying that Jones Day's position was an attack on Blockshopper's First Amendment rights and jeopardized the common practice of linking from one Internet site to another.
...BlockShopper ... offered to "make the link more literal" by including the law firm's Web address -- the terms agreed to this week, ( BlockShopper) said.
...Under the settlement,... BlockShopper can publish links to Jones Day but they can't be "embedded links." Those are defined as hyperlinks that are placed on a word or name.
Instead, BlockShopper will have to place the Web address next to references to the firm. In other words, instead of writing Daniel P. Malone Jr. is an associate in the Chicago office of Jones Day," BlockShopper must write "Malone (www.jonesday.com/dpmalone) is an associate . . ."
BlockShopper is permitted to use "deep links" to any Jones Day site. Those are links that directly access a specific page beyond the home page, such as attorneys' biographical pages.
While the settlement may seem like a fig leaf, it still rankles digital rights proponents who say BlockShopper did nothing illegal.
...Paul Levy, a lawyer with the consumer group Public Citizen, encouraged people to "replicate the lesson to Jones Day" by posting hyperlinks to the firm "as a way of daring, 'Big boy, try it again.'"
While the case was pending, BlockShopper agreed to remove links to the condo-buying associates in Chicago.
Now those postings will go back up, along with listings of property transactions by other Jones Day lawyers, (BlockShopper) said. "
With acknowledgement to The Cleveland Plain Dealer.
Tuesday, February 17, 2009
Need for evidence to show service mark in a personal name
Need for evidence to show service mark in a personal name:
A recent WIPO decision underlines what some practitioners and parties in UDRP proceedings forget- that to win these cases, you need evidence; assertions are not enough.
The decision is also another decision ( although there are cases to the opposite effect) that registration of a trademark in a State registry, rather than the Federal USPTO, at least in the USA, may not be enough to succeed in UDRP procededings.
The decision is Yost Properties LLC v. Viralt-shirts.com, WIPO Case No. D2008-1776.
Read the whole decision, but note the following two important aspects, both dealt with under Identical or Confusingly Similar.
1. The Complainant showed only a service mark registration in the State of Oregan and there was nothing to show that this carried a presumption of validity and no evidence that it had been used in commerce.
2. Moreover, the Complainant had not satisfied the test for cases where the claim is for a service mark in a personal name.
As the panellist said :
" This panelist, either as sole panelist or as part of a three-member panel, has addressed in a number of administrative proceedings under the Policy the hurdles that must be overcome for an individual to establish service mark rights in a personal name. See, e.g., Marvin Lundy and Law Offices of Marvin Lundy, LLP v. Scott E. Diamond, WIPO Case No. D2001-1327; Planned Parenthood Federation of America, Inc. and Gloria Feldt v. Chris Hoffman, WIPO Case No. D2002-1073; Charles Rapier v. Dark Moon Management, WIPO Case No. D2004-0221; Fields for Senate v. Toddles Inc., WIPO Case No. D2006-1510; Laughton Marketing LLC v. Boris Soposki, WIPO Case No. D2008-0718. ...Complainant has not presented any documentary evidence of use in commerce of the personal name argued to constitute a service mark. There is no persuasive basis in the provided record upon which the Panel might reasonably determine that Complainant has established service mark rights in ROGER YOST in the present proceeding."
Accordingly, the Complaint failed.
Lesson to be learned : make sure the evidence is there to establish all elements of the Policy that must be proved.
A recent WIPO decision underlines what some practitioners and parties in UDRP proceedings forget- that to win these cases, you need evidence; assertions are not enough.
The decision is also another decision ( although there are cases to the opposite effect) that registration of a trademark in a State registry, rather than the Federal USPTO, at least in the USA, may not be enough to succeed in UDRP procededings.
The decision is Yost Properties LLC v. Viralt-shirts.com, WIPO Case No. D2008-1776.
Read the whole decision, but note the following two important aspects, both dealt with under Identical or Confusingly Similar.
1. The Complainant showed only a service mark registration in the State of Oregan and there was nothing to show that this carried a presumption of validity and no evidence that it had been used in commerce.
2. Moreover, the Complainant had not satisfied the test for cases where the claim is for a service mark in a personal name.
As the panellist said :
" This panelist, either as sole panelist or as part of a three-member panel, has addressed in a number of administrative proceedings under the Policy the hurdles that must be overcome for an individual to establish service mark rights in a personal name. See, e.g., Marvin Lundy and Law Offices of Marvin Lundy, LLP v. Scott E. Diamond, WIPO Case No. D2001-1327; Planned Parenthood Federation of America, Inc. and Gloria Feldt v. Chris Hoffman, WIPO Case No. D2002-1073; Charles Rapier v. Dark Moon Management, WIPO Case No. D2004-0221; Fields for Senate v. Toddles Inc., WIPO Case No. D2006-1510; Laughton Marketing LLC v. Boris Soposki, WIPO Case No. D2008-0718. ...Complainant has not presented any documentary evidence of use in commerce of the personal name argued to constitute a service mark. There is no persuasive basis in the provided record upon which the Panel might reasonably determine that Complainant has established service mark rights in ROGER YOST in the present proceeding."
Accordingly, the Complaint failed.
Lesson to be learned : make sure the evidence is there to establish all elements of the Policy that must be proved.
What's in a name ? Domain Names are not 'gambling devices', says Court.
Kentucky court blocks move to seize gambling domains
With Acknowledgement to The Associated Press
Wednesday, January 21, 2009
Kentucky may not seize 141 online casinos' Internet domain names in an attempt to block them from operating within the state's borders, an appeals panel ruled Tuesday.
In a 2-1 opinion, a three-judge panel of the Kentucky Court of Appeals said an Internet domain name is not a gambling device. That left the Franklin County Circuit Court without jurisdiction in the matter.
"It stretches credulity to conclude that a series of numbers, or Internet address, can be said to constitute a 'machine or any mechanical or other device ... designed and manufactured primarily for use in connection with gambling,'" Judge Michelle Keller wrote in the majority opinion. "We are thus convinced that the trial court clearly erred in concluding that the domain names can be construed to be gambling devices subject to forfeiture."
The state sued the Web sites after determining that they allowed Kentuckians to gamble illegally and asked a judge to either force the sites to block Kentucky users or allow the state to take possession of the domain names. Kentucky already allows gambling on horse racing and bingo and has a state lottery.
Attorneys for the state and the Web sites have estimated that about 13,000 people in Kentucky use the online casinos.
Gov. Steve Beshear spokeswoman Jill Midkiff said officials had received the ruling late Tuesday, were still studying it and had not decided what the state's next step would be.
The appellate panel also ruled the circuit court cannot hold a hearing on whether Kentucky may seize the domain names. Keller's opinion said it's up to the General Assembly — not the courts nor the state Justice Cabinet — to bring domain names into the definition of illegal gambling devices.
Jeremiah Johnston, president of the Washington D.C.-based Internet Commerce Association, said he was pleased by the ruling. Still, Johnston said the court did not address whether the state had the authority to involve itself in seizing domain names of internationally based companies.
"That wild card is still out there," Johnston said. "In the end, it's a positive ruling, so we'll take it."
With Acknowledgement to The Associated Press
Wednesday, January 21, 2009
Kentucky may not seize 141 online casinos' Internet domain names in an attempt to block them from operating within the state's borders, an appeals panel ruled Tuesday.
In a 2-1 opinion, a three-judge panel of the Kentucky Court of Appeals said an Internet domain name is not a gambling device. That left the Franklin County Circuit Court without jurisdiction in the matter.
"It stretches credulity to conclude that a series of numbers, or Internet address, can be said to constitute a 'machine or any mechanical or other device ... designed and manufactured primarily for use in connection with gambling,'" Judge Michelle Keller wrote in the majority opinion. "We are thus convinced that the trial court clearly erred in concluding that the domain names can be construed to be gambling devices subject to forfeiture."
The state sued the Web sites after determining that they allowed Kentuckians to gamble illegally and asked a judge to either force the sites to block Kentucky users or allow the state to take possession of the domain names. Kentucky already allows gambling on horse racing and bingo and has a state lottery.
Attorneys for the state and the Web sites have estimated that about 13,000 people in Kentucky use the online casinos.
Gov. Steve Beshear spokeswoman Jill Midkiff said officials had received the ruling late Tuesday, were still studying it and had not decided what the state's next step would be.
The appellate panel also ruled the circuit court cannot hold a hearing on whether Kentucky may seize the domain names. Keller's opinion said it's up to the General Assembly — not the courts nor the state Justice Cabinet — to bring domain names into the definition of illegal gambling devices.
Jeremiah Johnston, president of the Washington D.C.-based Internet Commerce Association, said he was pleased by the ruling. Still, Johnston said the court did not address whether the state had the authority to involve itself in seizing domain names of internationally based companies.
"That wild card is still out there," Johnston said. "In the end, it's a positive ruling, so we'll take it."
Monday, February 9, 2009
WHAT'S IN A NAME ? DOMAIN NAMES ARE NOT GAMBLING DEVICES
Kentucky court blocks move to seize gambling domains
The Associated Press
Wednesday, January 21, 2009
Kentucky may not seize 141 online casinos' Internet domain names in an attempt to block them from operating within the state's borders, an appeals panel ruled Tuesday.
In a 2-1 opinion, a three-judge panel of the Kentucky Court of Appeals said an Internet domain name is not a gambling device. That left the Franklin County Circuit Court without jurisdiction in the matter.
"It stretches credulity to conclude that a series of numbers, or Internet address, can be said to constitute a 'machine or any mechanical or other device ... designed and manufactured primarily for use in connection with gambling,'" Judge Michelle Keller wrote in the majority opinion. "We are thus convinced that the trial court clearly erred in concluding that the domain names can be construed to be gambling devices subject to forfeiture."
The state sued the Web sites after determining that they allowed Kentuckians to gamble illegally and asked a judge to either force the sites to block Kentucky users or allow the state to take possession of the domain names. Kentucky already allows gambling on horse racing and bingo and has a state lottery.
Attorneys for the state and the Web sites have estimated that about 13,000 people in Kentucky use the online casinos.
Gov. Steve Beshear spokeswoman Jill Midkiff said officials had received the ruling late Tuesday, were still studying it and had not decided what the state's next step would be.
The appellate panel also ruled the circuit court cannot hold a hearing on whether Kentucky may seize the domain names. Keller's opinion said it's up to the General Assembly — not the courts nor the state Justice Cabinet — to bring domain names into the definition of illegal gambling devices.
Jeremiah Johnston, president of the Washington D.C.-based Internet Commerce Association, said he was pleased by the ruling. Still, Johnston said the court did not address whether the state had the authority to involve itself in seizing domain names of internationally based companies.
"That wild card is still out there," Johnston said. "In the end, it's a positive ruling, so we'll take it."
The Associated Press
Wednesday, January 21, 2009
Kentucky may not seize 141 online casinos' Internet domain names in an attempt to block them from operating within the state's borders, an appeals panel ruled Tuesday.
In a 2-1 opinion, a three-judge panel of the Kentucky Court of Appeals said an Internet domain name is not a gambling device. That left the Franklin County Circuit Court without jurisdiction in the matter.
"It stretches credulity to conclude that a series of numbers, or Internet address, can be said to constitute a 'machine or any mechanical or other device ... designed and manufactured primarily for use in connection with gambling,'" Judge Michelle Keller wrote in the majority opinion. "We are thus convinced that the trial court clearly erred in concluding that the domain names can be construed to be gambling devices subject to forfeiture."
The state sued the Web sites after determining that they allowed Kentuckians to gamble illegally and asked a judge to either force the sites to block Kentucky users or allow the state to take possession of the domain names. Kentucky already allows gambling on horse racing and bingo and has a state lottery.
Attorneys for the state and the Web sites have estimated that about 13,000 people in Kentucky use the online casinos.
Gov. Steve Beshear spokeswoman Jill Midkiff said officials had received the ruling late Tuesday, were still studying it and had not decided what the state's next step would be.
The appellate panel also ruled the circuit court cannot hold a hearing on whether Kentucky may seize the domain names. Keller's opinion said it's up to the General Assembly — not the courts nor the state Justice Cabinet — to bring domain names into the definition of illegal gambling devices.
Jeremiah Johnston, president of the Washington D.C.-based Internet Commerce Association, said he was pleased by the ruling. Still, Johnston said the court did not address whether the state had the authority to involve itself in seizing domain names of internationally based companies.
"That wild card is still out there," Johnston said. "In the end, it's a positive ruling, so we'll take it."
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