With all the attention and fervor surrounding the gTLDs that are poised to launch as part of the New gTLD Program, it’s easy to forget that other new top-level domains have launched over the past year or so. These include .SX and .CW, the country code extensions for Sint Maarten and Curacao, and .POST, the recently delegated top-level domain sponsored by the Universal Postal Union. According to a recent post on Domain Incite, it’s not just businesses and Internet users who have overlooked these newly launched TLDs – apparently, major browsers have as well. Continue reading “Getting with the .PROGRAM”
Month: January 2013
Decisions: Oh Brother!
The National Arbitration Forum (NAF) does not typically have to resolve family feuds, but that is what the body was tasked with when Reed Bousada filed a UDRP complaint against his brother, Jay Bousada, over the domain name Bousada.com.
The Complainant, Reed Bousada, alleges that his surname has been affiliated with a number of family businesses since the 1950’s, one of which, Bousada Interiors, he is now in charge of. He explains that he hired his brother “many years ago” to set up the website for the business using the disputed domain, but his brother registered the domain in his own name instead and after allowing his brother to use the domain for the business for a short period, decided to use it for personal purposes.
Jay Bousada, the Respondent, contends that he was never paid for his services of registering the domain and setting up the site and that, because the domain is registered in his name, he has the right to use it for whatever purpose he sees fit.
The NAF Panelist who had to sort through all of this dirty laundry ultimately decided that the dispute is more of a business or contractual dispute than a UDRP issue and dismissed the case, suggesting that another legal forum could better handle the matter (perhaps they should bring this matter before their mother?)
This sort of family drama rarely sees the UDRP stage, but when it happens in cases like this one, it’s clear that it is not the appropriate venue. Ultimately, the Complainant, seeking a quick fix, wasted time and money in choosing to file a UDRP case, which should be a lesson to all business owners facing similar issues.
Putting a Price on Peace of Mind
Though they have not yet announced when the new gTLD Trademark Clearinghouse (TMCH) will officially open for registrations, providers Deloitte and IBM have published the pricing scheme for those who wish to register their trademarks in the database. Registrations are available to two types: “Trademark Holders,” or individual trademark owners who wish to register their own marks in the TMCH, and “Trademark Agents,” or companies or agencies that represent multiple, individual trademark owners. There are also two types of fee structures, Basic and Advanced, which we break down here. Continue reading “Putting a Price on Peace of Mind”
Decisions: Good Grief!
As an experienced domain name lawyer will tell you, if some sort of contract exists between the parties to a domain name dispute, there’s a strong chance it’s not going to make for a successful UDRP case. The challenge in a UDRP complaint that pitted two Canadian grief recovery services against one another has only lead to pain and hardship for the parties. The Complainant, The Grief Recovery Institute, based in British Columbia, and the Respondent, Ontario-based Grief Recovery Institute, used to be business partners, and now the Complainant is attempting to win back use of GRIEF.NET and GRIEF-RECOVERY.COM.
According to the Complainant, the two parties began working together back in the 1990’s, and the Complainant instructed the Respondent to register the disputed domain names under the company’s name and have them redirect to the business’s main site. Instead, the Respondent registered the domains under his own name, and in 2010, the Complainant noticed that the domains were instead resolving to the site of a different, competing grief counseling service.
While it is not clear when the business relationship between the two parties broke down, the current animosity between the Complainant and Respondent is evident in the UDRP complaint, as are certain attempts to discern the truth. The Complainant neglects to reveal that a dispute was filed in the Federal Court of Canada over rightful ownership of the domain names in this complaint, and that the dispute is still currently open. When the Respondent reveals this, he requests that the complaint be terminated.
The Respondent also raises the issues of laches, citing that the Complainant waited 16 years after one of the domain names was first registered to file this complaint, but once the National Arbitration Forum (NAF) Panelist learns of the ongoing proceedings, he agrees with the Respondent and orders that the case be terminated. If that wasn’t enough, he explains that the contractual disputes that lie at the heart of this case do not fall within UDRP jurisdiction, dismissing the case on those grounds as well.
It’s clear that the Complainant attempted to bypass the pending lawsuit and win back the domain names in another fashion, but the Panelist didn’t fall for it. UDRP Panelists are experienced and have pretty much seen it all in terms of domain name disputes, so cases like this should be a reminder to use UDRP complaints for their intended purpose and not as a means to bypass other legal proceedings.
Reining in the Rogue
At FairWinds, one of the services we offer clients is a sort of “spring cleaning” of their domain name registrations. We know that, especially for large corporations, there are often many different individuals who register domain names – sometimes representatives from various departments within the company, and other times account representatives at partner agencies such as marketing and creative firms. We also know that even when these registrations are made with the best of intentions, after a certain point, things tend to go awry. As time goes on, employees leave and agency contracts expire. And eventually, the company’s network of domain names starts to resemble a tangled web. Continue reading “Reining in the Rogue”
Senator’s Domain Name Held Up by Gun Enthusiast
Veteran California Democratic Senator Dianne Feinstein has been a staunch activist against assault weapons throughout her tenure on Capitol Hill, but a domain name featuring her name will soon tell a different story. Dimitrios Karras, the CEO of the California gun parts and accessories store Ares Armor, registered SenatorFeinstein.com and will use the site to promote gun rights, reports TheDaily Caller.
The basic page already features articles supporting gun rights and links to petitions to charge Feinstein with treason, but the headline suggests that more content is coming, reading “COMING SOON! Senator Feinstein’s Biggest Fan Page!” Elsewhere on the site, Karras says “gun owners strike back,” filling what he thought was a void for opponents of Feinstein whose comments on official Facebook pages were often scrutinized.
Karras calls the registration and counterintuitive use of Feinstein’s name “funny” and “an entertaining thing,” suggesting levity, but it’s clear that the matter is important to him. His business is based on the firearms industry, and new legislation against assault weapons, as Feinstein has promised, could affect his livelihood.
Karras registered the page in early January, along with domain names related to other politicians, including California’s other Senator, Democrat Barbara Boxer. Because he is using the site as a gripe site and not assuming Feinstein’s likeness, he is within his legal rights in terms of domain name ownership, and he sees this as a way to bring attention to the issue and allow both sides to discuss the issues openly.
This, of course, is not the first time someone has used a politician’s name to voice a contrarian point of view, but Karras’s move is especially relevant given the increased attention that firearms legislation is receiving following a spate of gun violence in 2012. His ultimate vision for the site remains to be seen, but Feinstein could have avoided this situation by proactively registering this intuitive domain name.
That’s My Name, Says UDRP Complainant
UDRP complaints involving personal names are tricky, especially if the complainant or respondent holds a trademark for the name in question. A German lawyer learned this firsthand when he filed aUDRP complaint against a respondent called Eighty Business Names with the World Intellectual Property Organization (WIPO) over the domain name Lambsdorff.com.
Konstantin Graf Lambsdorff, a Berlin-based attorney who has practiced law for 20 years, owns a German trademark for the word LAMBSDORFF, registered in September 2012. He states that this mark entitles him to the domain name which, at the time of filing, redirected to a third-party website selling various goods and services apparently unrelated to the Respondent. The Cayman Islands-based Respondent did not reply to the Complainant’s contentions.
Without a response from Eighty Business Names, the UDRP categorized the case as a default. In such cases, the Panelist must draw conclusions from the information at hand, and a victory for the Complainant is not assured. In this case, the Panelist found that the disputed domain name was identical or confusingly similar to the Complainant’s established mark, but he could not prove that the Respondent registered the domain name in bad faith.
The domain name was registered in 2004, a full eight years before the Complainant obtained his trademark. The Panelist found no evidence that the Respondent knew of the Complainant at the time of registration, and although the redirects showed “some evidence of bad faith use,” he found “no evidence of bad faith registration” and ultimately decided that Lambsdorff.com would remain with the Respondent.
UDRP disputes involving personal names are always difficult, especially because it is difficult for the Complainant in this case, not an internationally recognized celebrity, to prove common law rights to a certain name. The trademark filing helped in one part of the case, but it ultimately couldn’t completely satisfy the Panelist. Any individual looking to establish a presence on the Internet should register relevant domain names proactively to avoid having to file a UDRP complaint.
ICANN Update: Dates for Clarifying Questions and Contention Sets Announced
During today’s new gTLD applicant update webinar, ICANN made some important announcements regarding the timing of upcoming milestones in the new gTLD application evaluation process. Specifically, ICANN stated that Contention Sets would be announced on March 1. This is nearly two months after the most recent date ICANN had put forth for the publication of Contention Sets, which was mid-January. Other milestones seem to be proceeding on schedule, though: Clarifying Questions for non-geographic strings will be issued beginning this Tuesday, January 15, at a rate of 100 per week, in the order of application’s Prioritization Draw numbers. The Trademark Clearinghouse will begin accepting trademark registrations in February, and the application evaluation panels are on track to release Initial Evaluation results beginning in late March, as planned. Continue reading “ICANN Update: Dates for Clarifying Questions and Contention Sets Announced”
The “Center” of UDRP Conflict
Does owning a trademark for a phrase, regardless of its specificity, entitle the trademark holder to that domain name? That is, essentially, the question that Manhattan Center Studios posed when it filed a UDRP complaint against James Lawson with the National Arbitration Forum (NAF) over the domain name ManhattanCenter.com.
The Complainant is a well-known New York City performance venue called the Manhattan Center, a building that houses the famed Hammerstein Ballroom. The Complainant owns a registered trademark for MANHATTAN CENTER HAMMERSTEIN BALLROOM THE GRAND BALLROOM as well as common law marks for THE MANHATTAN CENTER and MANHATTAN CENTER. In its filing, the Complainant alleges that the Respondent’s mark is identical to the common law mark and makes up a dominant portion of the official mark.
The Respondent registered the disputed domain name in 2004 after seeing it on a drop-list of soon-to-expire domains. He explains that he purchased it because he saw value in a name that referenced the geographic center of Manhattan, not because he knew about the Complainant’s facility. He also argues that the term MANHATTAN CENTER is geographically generic and cannot be claimed by the Complainant, saying that if the Complainant could have obtained an official trademark for the term, it would have.
Ultimately, the Panelist ruled in favor of the Respondent and allowed him to keep the domain name. He determined that the Respondent had not registered the domain name in bad faith, as the Complainant’s trademark application was merely pending at the time of registration, and the Respondent was not using it to promote goods or services that were detrimental to the Complainant’s business.
This decision should be a lesson to all brand owners looking to file a UDRP complaint on a domain name made up of a generic term or phrase. If the Respondent is abusing the domain name, selling goods or services that explicitly reference a Complainant’s business, there might be a case, but in a situation like this one, where the only evidence is the name, it is harder to prove. It is best to consult with experienced UDRP lawyers before any filing, but it is especially crucial in cases including generic terms.
Me First
Launching a new brand can be tricky, whether you’re a new enterprise making your move onto the global stage or an established corporation looking to expand your offerings or broaden your image. One thing that can help ensure the success of a fledgling brand, though, is a great domain name to support it. In addition to providing a platform for the new brand, owning a great domain can reinforce the brand in the digital world. And in some cases, a great domain can become a great brand. Continue reading “Me First”