The domain at issue in this week’s decision is roispresso.com. So what on Earth is “roispresso”, you may ask?
Well, the Respondent – the company behind www.roispresso.com – named ENERG d.o.o., explains that Roispresso is an espresso-like drink made from rooibos tea and that the product was originally called “Respresso” but the name was changed to avoid a lawsuit by Nestle. Given that the Panelist in this National Arbitration Forum (NAF) decision ruled that the Complainant not be granted relief, it looks like ENERG d.o.o. gets to keep its website and its new(er) name.
The Complainant is DuPreez International LLC dba Rooispresso. Rooispresso advertises a very similar beverage on www.rooispresso.com, explaining that its product is a “rooibos tea in specially formulated espresso form”. While the Complainant’s site features photos of the packaged product as well as specific locations where the product can be purchased, the Respondent’s site does not indicate where its product can be purchased nor shows any photos of the packaged product itself. The Respondent’s site does feature reviews and press mentions of Roispresso, however, including online articles that report that London’s Trafalgar Hotel Bar now serves Roispresso.
Under the first UDRP factor the Panelist found that the domain name is confusingly similar to the Respondent’s trademark, but then held that the Complainant failed to adequately establish that the Respondent has no rights or legitimate interests in the domain name under the second UDRP factor. Although the Complainant claimed that the Respondent is not commonly known by the roispresso.com name, the Panelist pointed out that the Respondent does, in fact, have a registered trademark in Slovenia for ROISPRESSO and that it used its trademark for at least three months prior to receiving a warning letter from the Complainant.
As for the third UDRP factor, the Panelist decided not to make a finding on the question of bad faith registration and use. However, he does make an interesting point: “The Panel notes, with some concern, that the evidence appears to indicate that Respondent indeed agreed to change its domain name, and has failed to do so. It is not, however, within the jurisdiction of this Panel under the Policy to enforce contractual agreements. Any claim that Complainant may wish to advance regarding that issue will need to be brought in an appropriate court with jurisdiction over such claims.” You may have heard me mention, in prior blog posts, that the UDRP is no place for contractual disputes.
So, the bottom line here is that a brand owner must carefully investigate the owner of a domain name before firing off a UDRP complaint. Even where they don’t, if new facts are brought to light by the respondent, it’s the job of complainant’s counsel to suspend the case and possibly even recommend settlement if those new facts make it look like the case isn’t the sweet tea it once appeared to be but has turned into a bitter brew.
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If you’re interested in learning more about UDRP decisions (specifically, how to get more out of your enforcement budget), join me and the FairWinds UDRP Team on May 6, 2014 for “Improve Outcomes, Reduce Costs: UDRP in 2014”, a free 30 minute webinar. Register here today.
Global insurance and financial management giant AXA is the first brand to launch its new top-level domain .AXA with original content, including an explanation of top-level domains, the purpose behind its new site, and an invitation to affiliates to register within it.
“When you visit a website with an Internet address ending with .AXA, you can be certain that it’s authorized by AXA and overseen by us,” the company said on its new website, http://www.domains.axa/.
AXA is ranked 20th on the Global Fortune 500 list, with over 102 million customers in 56 countries and global annual revenues of $154.6 billion. Second-level domains will be available within .AXA for corporate and affiliate purposes only.
Since the beginning of the year, approximately 70 new top-level domains have launched. All have been generic terms, such as .GURU and .PHOTOGRAPHY, and are open to the public and the business community for registration of second-level domains. Of the almost 700 branded commercial enterprises to apply for their own top-level domains, AXA is the first to go public with unique content on its new top-level domain.
“AXA’s action represents a watershed moment for brands across the globe that applied for new top-level domains,” said Josh Bourne, Managing Partner of FairWinds Partners. “AXA emphasizes that authenticity and trust are central to the purpose of its new gTLD, echoing the goals of many .BRAND applicants.”
A recent National Arbitration Forum (NAF) decision reveals that even attorneys can make questionable decisions when it comes to filing a complaint against a domain name registrant.
The Complainant, Steven J. Schwartzapfel and Shwartzapfel Lawyers, P.C., requested that www.schwartzapfellawyers.com and www.socsecuritydisability.com be transferred from the Respondent to the Complainant.
The first makes perfect sense; the latter, not so much.
The Complainant currently uses www.fightingforyou.com for its website, and the Respondent – Barrett Sharpe/Legal Hub, LLC – was using www.schwartzapfellawyers.com to display the following negative content about the Complainant:
The Complainant was granted relief for this website according to the Decision, but as of 4/18/14, the Respondent’s content appears to still be up.The website used by the Complainant for his law firm: http://www.fightingforyou.com/ on 4-18-14.
The Respondent failed to submit a response, and, not surprisingly, Panelist Neil Anthony Brown QC found that www.schwartzapfellawyers.com was identical and/or Confusingly Similar to the Complainant’s business name, that the Respondent lacks Rights or Legitimate Interests in the domain name, and that the domain name was registered and used in bad faith. He then ordered that this domain name be transferred to the Complainant.
However, the Panelist seems to have been as confused by the request to transfer www.socsecuritydisability.com as we are, noting in his Decision that “As Complainants do not allege that they have rights in a trademark with respect to the socsecuritydisability.com domain name, the Panel is unable to make any findings as to whether that domain name is identical or confusingly similar to a mark in which Complainant has rights.”
Furthermore, as of April 18, 2014, there is no real content associated with the domain name, much less content regarding the Complainant, so there can’t be any bad faith registration.
An empty blog greets visitors to www.socsecuritydisability.com on 4/18/14.
I’m left wondering if this second domain was included in the complaint by mistake or if the Complainant law firm was just uneducated on the proper use of the UDRP. In either case the Panelist made the correct decision in denying the complaint against this domain.
The takeaway? If you think you may have a case against the current holder of a domain name, seek the advice of counsel based upon that counsel’s experience with domain name enforcement and his or her record of success (in case you’re wondering, I’ve only lost one case out of over 230 filed).
Education Begins On Meaning of U.S. Address System Oversight
The debate over a proposed transfer of authority over the Internet address system has been launched in Washington D.C., generating plenty of heat, many opinions, a few concrete proposals, and not a lot of light. Indeed, what has been illuminated most brightly is the confusion among policymakers about how the Internet really works.
“Generally, when the Congress gets involved in the engineering questions of the Internet, we sometimes show we don’t understand the Internet,” said Rep. Zoe Lofgren, D-Calif., who represents part of Silicon Valley.
Two House hearings, three House bills, and at least two think tank discussions within the past two weeks have nevertheless served as a foundation from which to review the past, present, and future of Internet governance. Americans, take note: This affects you.
At stake is the announcement by the National Telecommunications and Information Administration (NTIA) on March 22 that it would transfer authority over the allocation and coordination of Internet addresses to the global “multistakeholder community,” which consists of engineers, business, non-governmental organizations, governments, and individuals from all over the world.
The transfer has been envisioned since 1998 when the Internet Corporation for Assigned Names and Numbers (ICANN) was established to oversee and coordinate the address system. The Department of Commerce kept its hand in the game, benignly, as ICANN launched operations. The transfer was further anticipated in 2012 when the House unanimously endorsed a resolution backing the multistakeholder model of Internet governance, which is the model ICANN follows.
Now that ICANN has managed the address system for 15 years, Republicans are raising alarms – both legitimate and politically motivated alarms. Some revolve around Republican concerns about economic and national security interests, and some undoubtedly are to question in public forums President Obama’s leadership on international affairs.
The fear, Republicans say, is that the U.S. will hand over control of the Internet, just like it did in 1977 with the Panama Canal. In the worse case scenario, China, Russia or other authoritarian regimes would seize control and impose speech restrictions beyond their own borders, Republicans say.
“I cannot overstate the importance of an Internet free from government control,” Rep. Greg Walden, R-Ore., said at a hearing before his Subcommittee on Communications and Technology. “If there aren’t sufficient safeguards to ensure no government intrusion, this concept should go no further.”
But control of the Internet is not at stake here. No one controls the Internet, unless it is the engineers who understand the mathematical formulas that connect networks and devices. Oversight of the Internet address system is the issue, and witnesses at the two House hearings had very different takes on the importance of the U.S. role.
Assistant Secretary for Communications and Information Larry Strickling, who testified at both House hearings, downplayed the importance of the oversight role played by the Commerce Department’s National Telecommunications and Information Administration (NTIA), which he heads.
“It’s largely a clerical role,” he said of NTIA’s approval of directives from the Internet Assigned Numbers Authority (IANA), a department within ICANN that oversees the global allocation of Internet addresses and manages the “root zone,” where all top-level domains, .COM, .GOV, .EDU, etc., reside.
At another point, he said IANA functions amounted to “a small technical issue” and stressed that NTIA has no policy-making authority.
But Republicans asserted that oversight of the address system affects the core of Internet governance.
“All hyperbole aside,” said Judiciary Committee Chairman Bob Goodlatte, R-Va., “this hearing is about nothing less than the future of the Internet and, significantly, who has the right, ability, authority to determine it. Should it be decided by a few people in Washington, Beijing, Moscow, Sao Paolo, or even Silicon Valley, or should it be determined by those who use and stand to benefit from it.”
Paul Rosenzweig of the conservative Heritage Foundation echoed Goodlatte’s assessment.
“This is quite a consequential change,” he told the Judiciary Subcommittee on Courts, Intellectual Property and the Internet. “The network as we know it is a central driver of economic and political freedom around the globe. Any change to its governance comes with significant potential risks and also potential gains.”
Strickling and ICANN President Fade Chehade stressed again and again that they would not allow the transfer if there were any chance authoritarian governments could seize control. In fact, NTIA has sketched out four principles that must be met by any transition proposal.
The transition plan must support the multistakeholder form of governance
It must maintain the security, stability, and resiliency of the Internet
It must meet the needs of global Internet customers vis a vis timeliness of services, transparency, reliability, auditability
And it must maintain the openness of the Internet
Two witnesses at the House hearings offered solutions to ensure these principles are met.
Rosenzweig suggested outside audits of IANA functions, an IANA inspector general, a commitment to be responsive to the public, and assurances that once the structure is in place, it doesn’t change.
“The challenge for ICANN going forward,” he said, “is to develop an architecture for the IANA function that ensures its technical capability and maintains a political independence from control of authoritarian regimes. I think there is a possibility for that structure to be developed.”
Steve DelBianco, Executive Director of NetChoice, an e-commerce trade association, called for “scenario planning” or “stress tests” to assess whatever new accountability structure might replace the current set up.
He laid out eight scenarios that could jeopardize ICANN’s ability to oversee Internet address functions. One scenario anticipates ICANN’s bankruptcy, another anticipates ICANN moving the base of its operations out of the U.S., a third anticipates a change from consensus to majority voting, a fourth anticipates ICANN adding a new top-level domain despite security and stability concerns, and so on.
“Although these scenarios are unlikely,” DelBianco said, “some governments have expressed skepticism and dissatisfaction with the multistakeholder process and might pursue such courses of action… If we establish appropriate scenarios and stress tests as part of the process to design new accountability mechanisms,” DelBianco said, “we’ll end up with something that will answer to the threats and challenges we’re likely to face in the real world.”
The transfer of IANA oversight from NTIA to the multistakeholder community is supported by Google, Microsoft, Facebook, Cisco, Verizon, the Motion Picture Association of America, and the Chamber of Commerce. Those are powerful constituencies. But their motivations – expanding their global markets – are decidedly different from government motivations.
And the government motivation seems twofold: Follow through on the original plan from 1998 and gain some good will from the International community in the wake of revelations about National Security Agency’s vast surveillance program, exposed by Edward Snowden.
“Counterintuitive as it may seem, Washington’s decision to sever its ties to ICANN might have been the best way to guarantee openness, especially since the Commerce Department has stipulated that it will not implement the decision if Internet regulation falls to a government-led or government-only organization,” Stacie L. Pettyjohn wrote in Foreign Affairs. “Had the United States kept its fist clenched around ICANN, it would have undermined faith in the multistakeholder model of Internet governance and empowered the ITU (The United Nation’s International Telecommunication Union). Instead, Washington has disarmed critics and helped ensure that the Internet will remain open and free.”
You know a show’s made it these days when Annie Leibovitz photographs the cast for the cover of Vanity Fair. And when devoted fans sign a petition to The White House in support of appointing an ambassador to the fictional land depicted in the show. Not to mention when CNN reports a measureable increase in the number of babies named after show characters.
Now Time Warner, Inc., the media and entertainment company that owns the trademark registration for Game of Thrones, can also tout a winning National Arbitration Forum decision regarding gameofthrones.com.
The unnamed Respondent, who failed to submit a Response, registered gameofthrones.com in 2009, perhaps hoping to gain from the popularity of the book series upon which the show is based. Surprisingly, the author of the book series, George R.R. Martin, did not register the domain name – though he maintains an extensive and current website and “Not a Blog” at www.georgerrmartin.com. HBO registered the trademark in 2011, when the television series actually began.
Had the Respondent maintained an active fan fiction site, for example, on the domain name, he may have had a viable fair use Response. However, as is outlined in the Complaint, the gameofthrones.com domain (in addition to other domain names named in the Complaint, including truebloodseason4.com and newscnn.com) was being used for “commercial websites that include commercial links to third-party sites that sell services that compete with Complainant.”
In the end, Panelist Neil Anthony Brown QC determined that the Complainant met the required elements – identical/confusingly similar domain; Respondent’s lack of rights/legitimate interests; and registration and use in bad faith – and ordered gameofthrones.com, along with the other domain names in question, to be transferred from the Respondent to the Complainant. And the Panelist made this decision just in time, since the season premiere aired on Sunday, April 6, 2014 to an astonishing 6.6 million viewers.
As for how this season of the show will develop, the Panelist had no comment.
International conversation has shifted since the National Telecommunications and Information Administration’s (NTIA) announced it would relinquish its oversight of Internet address functions. That was one of the conclusions Ambassador Daniel Sepulveda, Deputy Assistant Secretary of State and U.S. Coordinator for International Communications and Information Policy presented at the Hudson Institute’s panel discussion entitled: “The Future of Internet Governance: A Discussion with ICANN’s CEO, the Head of the NTIA, and More”.
According to Ambassador Sepulveda, the NTIA’s decision has brought focus to the multistakeholder model of Internet governance, and trends are moving towards global involvement and global embrace of such a model – a promising sign when just months ago many were considering whether a multilateral model led by national governments may be a better alternative. There is an understanding now, he noted, that America is open and committed to the multistakeholder system, and that is driving the positive attitude in the international community.
Other panelists at this event included ICANN CEO Fadi Chehade; NTIA Assistant Secretary Larry Strickling; and former Federal Communications Commission (FCC) commissioner Robert McDowell.
Mr. McDowell expressed concern about the potential for the Governmental Advisory Committee (GAC) within ICANN to move away from a consensus-model to a majority vote-model, thereby making it easier for some regimes to push through outcomes less protective of online freedoms. The other panelists also acknowledged this concern, but Mr. Strickling and Mr. Chehade were particularly adamant that the multistakeholder model would not allow for the chipping away of online freedom.
Mr. Chehade noted that ICANN has to “get this [transition] right. We will move in a very calm and judicious way with the community through the process.” Any proposal that falls short will be “dead on arrival – as it should be.”
We’ve written about Paris, France before but this is the first time we’re blogging about the heiress. Paris Hilton recently won a WIPO complaint against the owner of ParisHiltonPornVideos.com. The domain name is now registered in her name and that of her attorneys, according to Whois.net.
While the former reality-star (who’s now pursuing a career as a D.J.) has won cases and continues to enforce her brand rights against websites that contain her name in relation to her perfume and sunglass lines, this case takes us back to what brought Ms. Hilton a great deal of publicity over ten years ago: X-rated content.
As the Complainant, Paris Hilton’s stable of attorneys claimed her right to the domain name with respect to her trademarks for PARIS HILTON and argued that the domain name is “confusingly similar” to her trademarks.
The Respondent, John Daizy of Slovenia, defaulted. But he could have at least put up an interesting defense claiming that the domain is merely descriptive and only uses the Paris Hilton name to identify the nature of the website’s content. Had he put up such a defense, the Respondent might have defeated the claim since there are no obvious ads on the site.
However, the fact that video clips on the site contain links to another site, hotelheiress.com, where the full pornographic video can be seen for a fee, might have doomed his fair use defense since he’s clearly using the Paris Hilton name for commercial purposes.
If his own site merely showed the video, was not trying to sell anything, and had no links to other commercial sites, the Respondent might have won claiming that he only made a “fair use” of the domain as a fan page (aligning with the descriptiveness issue above). Although Paris Hilton is reportedly drawing “massive crowds” as a D.J., my guess is that she’s not looking to expand this particular fan base.
An Information Technology and Innovation Foundation panel held in Washington D.C. began to plumb the complexities of the planned U.S. relinquishment of the Internet address system to the Internet Corporation for Assigned Names and Numbers (ICANN).
Entitled Bully or Bodyguard? Assessing the Proper Role of the United States in Internet Governance, the panel discussion underscored just how delicate the transfer will be.
Whether bully, bodyguard – or, according to one panelist, a beleaguered, imperfect overseer – the main quest will be to ensure that ICANN is empowered rather than overrun by other governments, including governments hostile to democracy and free speech.
Panelists noted that, for whatever its flaws, ICANN and the National Telecommunications and Information Administration (NTIA) were, together, strong advocates of free markets and freedom of speech online.
So how can the NTIA ensure that ICANN will be ready and able to handle all that will come its way?
Steve Del Bianco, Netchoice, advocated putting ICANN through stress tests to guage its readiness to take on oversight of the Domain Name System. What would ICANN do in the event of the loss of technological or monetary capability to run the root, for example? An ICANN prepared with answers for various scenarios will be an ICANN prepared for the future, Del Bianco said.
Phil Corwin, Virtualaw, and Eli Dourado, George Mason University, both noted that Congress can play a helpful role by asking the right questions as it started doing at a hearing this week. Congress must also be prepared to pressure the NTIA should the transition plan take a wrong turn, so long as it is mindful of the international perception of such involvement.
One thing is clear: The multistakeholder community must come together and make sure that this transition considers all relevant voices.
