Month: May 2012

Prometheus Global Media, LLC, the parent company of Billboard and the Hot 100, filed for UDRP arbitration over two domain names, BillboardRadioOnline.com and TheHot100Radio.com. According to the UDRP rules, a Complainant can only bring a complaint relating to more than one domain name if the domains are registered by the same entity. In this case, the Complainant argued that both domains had in fact been registered by the same individual, a “Shawn Lloyd,” despite the fact that the WHOIS records list “Billie Druer” as the registrant of BillboardRadioOnline.com and “Webstarts” as the registrant of TheHot100Radio.com.

How did the Complainant attempt to prove that the two domains belonged to the same registrant? By pointing to the Facebook page of “Shawn Lloyd,” which lists both of the domains in question, and by showing that the two domains resolve to similar content. This evidence was a bit thin for the National Arbitration Forum Panelist, however, and she was forced to dismiss the Complaint over one domain name, TheHot100Radio.com.

Those of you who have been reading this blog for some time know that the UDRP does not allow for evidentiary discovery or cross-examination of witnesses. If you need more facts to develop your case the better (but more time-consuming and expensive) choice is to file a claim in federal court under the Anticybersquatting Consumer Protection Act (ACPA) where you can request your opponent’s documents and depose and cross-examine its witnesses. If you’re going to pursue the UDRP to save time and money, you’d better have a solid case from the start.

In the Prometheus Global Media case, the Complainant did the best it could with the facts it had available, but it just wasn’t enough to convince the Panelist that the owner of the two domains were really the same person. Despite the websites looking similar and both domains being listed on someone’s Facebook page, the actual WHOIS records for the domains list different owners, addresses, phone numbers, email addresses, creation dates, and registrars. Even a look at the WHOIS history shows no further similarity than two different towns in the Canadian province of Ontario. Even though these towns are a mere half-hour drive from one another, this simply is not enough to satisfy paragraph 3(c) of the UDRP which says that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”

In the end, this will likely be nothing more than a speed bump in the complainant’s drive to reclaim these 2 domains since the cost of filing two UDRP cases is still far less expensive and time-consuming than that of filing just one ACPA claim. I expect we’ll see a decision on the second domain in another few months and my money’s on another win for the complainant.

Google Inc. recently filed a UDRP Complaint with the National Arbitration Forum over 763 domain names that all contained its trademark, “Google” followed by another word or phrase, including generic terms, celebrity names, geographic terms, and other brand names. The Respondent, Chris Gillespie, argued that the word “google” has become a generic verb meaning “to search the Internet,” and as such, the dispute over these domain names was outside the scope of the UDRP.

When someone goes and registers 763 domains that contain one of the world’s most famous trademarks, you have to wonder what exactly was going through that person’s head.  Here, Gillespie claims that the term “Google” has become a generic synonym for the concept of searching for something online. He even went so far as to file an unspecified action at the Trademark Trials and Appeals Board (TTAB) to have the word declared to be generic. However, like all plans that “seemed like a good idea at the time,” Gillespie got over-confident and grabbed a number of domains that can be described as double squatting, including GoogleDallasCowboys.com, GoogleStateFarm.com, and GoogleWellsFargo.com.

This puts Gillespie in the highly awkward of having to argue that i) the word “google” is being used generically and that ii) the second famous trademark is being used nominatively. This pretzel logic was simply too much for the UDRP Panel, who found the domains were registered for the purpose of selling, renting or otherwise transferring them to Google or its competitors, and that the registration of such a large number of domains in such a short period of time amounted to a pattern of bad faith conduct. As for the TTAB case, the Panel found that it wouldn’t affect other Google trademark registrations in the U.S. and around the world, and so was of minimal relevance to this case.

It can seem like an incredible win when a brand is able to recover a large volume of domain names from a single squatter, but it also raises questions about what the brand in question is to do with the domain names after the fact. For every domain name in a company’s portfolio, that company must pay an annual renewal fees. So when a company suddenly adds hundreds of new domains in one fell swoop, it can see its annual costs jump significantly. While it was definitely a smart move for Google to take these domains out of the hands of a squatter, it will now have to determine which are worth keeping, and for how long.

Fashion model Astrid Muñoz recently filed a UDRP Complaint with the National Arbitration Forum (NAF) to secure the transfer of the domain name AstridMunoz.com. Muñoz contended that her name has gained international recognition and earned the status of a common law trademark because of the fame that she has achieved as an international model. The Respondent disagreed with this assertion, saying that it was the joint venture partnership between Muñoz, the Respondent, and the Respondent’s business partner that actually made the “Astrid Muñoz” mark famous – this business venture, conveniently, was also named “Astrid Muñoz.”

Confused yet? So was the NAF Panel. It concluded that this peek into the parties’ shared past did not provide enough detail about their prior relationship to impact the outcome of the arbitration. Rather, the Panel found that the Respondent’s use of the domain name to promote a “tell all” book and screenplay about Munoz did not constitute a bona fide offering of goods or services or a legitimate use, and ultimately ordered that the domain be transferred to Muñoz.

Given the lack of any discovery or other ability to verify an opponent’s evidence in the UDRP, the Astrid Muñoz decision highlights the discretion allowed to panelists in deciding just how much credibility such evidence is given. Frequently, when parties have a prior relationship, a Panelist will decide that there was no bad faith by the respondent at the time the domain was registered, regardless of the current content on its website. However, here, “[t]he Panel notes that while Respondent has provided multiple affidavits to support his claim, none of the evidence or documentation appears to be professionally done or even objectively indicates the involvement of the Complainant.” To me, this subtly suggests that the Panelist felt the Respondent might be manufacturing evidence or otherwise trying to defraud the UDRP process.

Another interesting component of the decision is the fact that the Respondent claimed it has a First Amendment right to promote its tell all gossip book about the Complainant, a famous model and photographer. The Panelist rightfully held that “[w]hether Respondent may establish a website and provide some free speech protected content related to the Complainant is beyond the scope of the UDRP. The UDRP proceeding focuses on how a website is identified and free speech rights do not override trademark rights in a manner that supports a protected mark’s misappropriation or confusing misuse.” While the UDRP makes allowances for fair use, apparently the commercial sale of a gossip book does not fall within that category.