Delta Dental Goes After … Everyone

Have you ever visited a dentist who went after every possible cavity with his drill – all in one visit? In this week’s World Intellectual Property Organization (WIPO) decision, Delta Dental appears to have gone after every possible respondent – nine, to be exact – in one complaint.  This type of consolidating can only be done where (i) the disputed domain names are subject to common ownership or control, and (ii) the consolidation would be fair and equitable to all parties.

Dentist Office Stock Photo to illustrate UDRP caseDelta Dental operates dental and vision offices across the United States and holds federal registered trademarks in the U.S. for Delta Dental. The complainant initially included 30 domain names in the complaint, but one respondent transferred deltadentalofky.com prior to the proceeding. The panelist allowed the consolidation of complainants citing the following:

Previous UDRP panels have articulated principles governing the question of whether a UDRP complaint may be brought against multiple respondents. These criteria encompass situations in which (i) the disputed domain names or the websites to which the disputed domain names resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties…Common control has been found based on commonalities in registrant information, such as shared administrative or technical contacts and shared postal or email addresses, as well as other circumstances in the record indicating that the respondents are related or that a sufficient unity of interests otherwise exists that they may be essentially treated as a single domain name holder for purposes of paragraph 3(c) of the Policy… A unity of interests may be shown to exist where each of the disputed domain names have been used in an identical manner to attract Internet visitors to websites operated by the registrants containing identical materials. Another factor which evidences common control is similarities in the naming convention of the disputed domain names.

I find this rather interesting and a bit on the fringe of what constitutes good evidence of common ownership or control.  Here, many of the domains are with different registrars and the identity of the true owner was hidden under different privacy services.

However, they all resolved to similar pay-per-click (PPC) websites and they all followed a similar pattern of incorporating the brand and state names.  In consolidating the cases the panelist went out on a limb somewhat but it seems to be a rather sturdy tree and – finding that the complainant upheld all three of the requirements (identical or confusingly similar, rights or legitimate interests, registration in bad faith) – ordered the domain names be transferred to the complainant.

I was asked, by a colleague, whether this situation is analogous to a reverse class action and it got me to thinking. The comparison isn’t quite accurate but I thought it’s more like a single “gang of one” in which a single cybersquatter tries to masquerade as different registrants to try and throw the brand owner off the scent when searching out infringements. However, in this case, the ploy failed and the gang turned out to be just a single individual sitting before the glow of his computer screen and finishing off his bag of corn chips.

UDRP respondents

The Future of Internet Governance: FairWinds Webinar

June marks the beginning of summer, at least in the northern hemisphere – longer days, shorter nights and (depending on your internal thermostat) either life-affirming warmth or misery-inducing heat.

This year, June is also notable for Internet governance milestones:

In a webinar entitled, “Three Years Beyond the Dot: A Retrospective of the New gTLD Program”, FairWinds President and CEO Nao Matsukata considers the Program in relation to Internet governance and provides key questions to consider as the governance debate develops at home and abroad.

The webinar is divided into four main parts:

  1. Overview
  2. Decision to Launch
  3. Evaluation & Measurement
  4. Conclusion

Overview

In the first section, Matsukata plays a short, animated video about the program to get everyone on the “same page” in terms of what new gTLDs are and how the Internet is expanding.

He compared the Internet of the 90’s, when Google search was born and innovative new business models like Amazon and eBay were founded, to the Internet today.

It is, he said, a substantially more global network that must grapple with increasingly complex and pressing governance issues, thanks in large part to the revelations of National Security Agency (NSA) spying made public by Edward Snowden in 2013.

Decision to Launch

In the second section, Matsukata describes the reasons ICANN decided to launch the program, noting that – as is indicated in slide 13, below –

“These [three-, four-and five-letter domain names] are sold at prices that are absolutely out of the reach for most people to participate in… It is more and more difficult for even smaller companies to get certain names that might be helpful to them. So the idea behind expanding the space certainly fits the bill for those who are looking to get into the game at a price that’s much more affordable and manageable for small businesses and individuals.”

Slide describing decrease in the supply of 3, 4 and 5 letter domain names in the .COM space

Evaluation & Measurement

In the third section of his presentation, Matsukata considers the progress of the program based on ICANN’s own promises in its Affirmation of Commitments and the preamble to the New gTLD Applicant Guidebook, as well as significant outcomes, such as trademark protections offered through the Trademark Clearinghouse and Uniform Rapid Suspension System.

Public awareness statistics regarding new gTLDs

Conclusion

Matsukata touches upon the need for greater public awareness of the New gTLD Program, citing FairWinds’ own research, which suggests that – while awareness of new gTLDs is relatively low – willingness to trust .BRAND gTLDs is high (see figure below).

He also suggested that multistakeholderism and the rule of law should be thought of as tools to achieve the U.S. objective of a free and open Internet.

To view the deck on SlideShare, click here.

Notes from ICANN 50 – June 26

Timelines get pushed back, constituencies raise their voices, and ICANN sits up to listen – here is some of the latest coming out of ICANN 50.

  • The ICANN Board has not and will not pass any resolutions relating to name collision this week. It is expected that the ICANN Board will approve the final name collision mitigation solution before the end of July. Given the short amount of time between then and August, the strings to be auctioned in August will now be auctioned during the September and October auctions.

The Governmental Advisory Committee (GAC), which represents national governments in the ICANN community, sets out some priorities:

  • While ICANN stakeholder groups have always openly voiced their criticism of ICANN when issues arise, the GAC’s dissatisfaction with the actions and decisions made by the ICANN Board with connection to GAC Advice on new generic top-level domains (gTLDs) has become apparent and was communicated in the public ICANN Board – GAC meeting. The GAC’s London Communiqué echoes some of these frustrations. If the GAC gets its wish, the New gTLD Program Committee (NGPC) will have to develop much more specific requirements for Category 1 and Category 2 applicants, which it has been hesitant to do thus far.
  • The GAC expressed interest in dedicating time to discuss Whois issues – that is, issues with how domain name registration information is gathered and stored – at ICANN’s next public meeting in Los Angeles. The GAC considers this a public policy issue, and ICANN’s expert working group found that Whois conflicts with national privacy laws.

Under criticism, ICANN looks to put a good foot forward, showing a positive regard for the stakeholder community:

  • In light of the letter sent by the New TLD Applicant Group (NTAG) and the Registry Stakeholder Group, which listed out a litany of areas for improvement for ICANN’s Global Domains Division (GDD), the GDD is doing everything it can to show that it is responsive and dedicated to serving the interests of the applicants and new gTLD operators. For example, the GDD hosted a session to explain some operational aspects of the group and has made itself available to questions and feedback.

Another notable development from ICANN is that the community has officially begun talking about a second gTLD application round. The Generic Names Supporting Organization (GNSO) Council, the policy-making arm of ICANN, approved a motion to create a discussion group “to discuss the experiences gained by the first round of new gTLD applications and identify subjects for future issue reports, if any, that might lead to changes or adjustments for subsequent application procedures.” They’ve also asked ICANN staff for a status report on this round, plus a projected timeline for future rounds. While a new round is still likely years away, this is a definitive step forward.

Will .SOCCER or another gTLD Win by the Next World Cup?

The soccer bug has bitten FairWinds Partners – how could it not? – and now we’re eagerly watching how the new top-level domain (TLD) applications for .SOCCER, .FOOTBALL, and .FUTBOL will pan out.

Several applications each for .SOCCER and .FOOTBALL are currently in contention. .FUTBOL has already been delegated into the root zone and thus has a head start. We’ll have to wait and see which TLD of the three will be the most popular by the time the next World Cup rolls around in 2018. At that point, the new extensions won’t be new anymore but a familiar piece of the Internet landscape.

One factor to watch is the potential change in demographics of the groups watching soccer. Different countries and cultures may not only have different words for a sport, but may also have different online navigation preferences and rates of adoption for new gTLDs.

The Economist recently published an article (“A Game of Two Halves“) about the fact that, despite soccer’s global appeal, the world’s largest nations – China, India, and the U.S. – haven’t been deeply involved with the sport.

But, as the piece notes, that might change in the coming years. Americans are filling soccer stadiums in larger numbers than ever before. Average attendance is at around 18,600 people per match in the U.S. and the sport is “second only to American football in its popularity with Americans between the ages of 12 and 24.”

China is heavily investing in soccer as well, building a major soccer academy in the province of Guangdong. And India’s younger generation is likewise poised to usher in greater support for the sport with the aid of Bollywood actors who are helping to promote the Indian Premier League.

Whatever the future of the sport (and .SOCCER, .FOOTBALL, and .FUTBOL) might be, count us among the millions of people now tuning in to the World Cup – on to Round of 16, Team USA!

Online Brand Reputation Management: New Trend

SocialMedia

A recent article in AdWeek predicts that, “some key trends will push brands to build social media capabilities into their own websites and own, rather than rent, social interaction with their customers.”

It makes sense for brands to own the raw data about their customers that otherwise would belong to a third-party. Owning data frees brands from changing algorithms and relying on others’ reports. It also makes sense within what looks like a larger trend of companies taking greater ownership of their online brand reputation management by owning .BRANDs.

Incorporating the best of what social media has to offer on their own websites might be an enticing alternative to remaining at the mercy of social media platforms. Social media platforms call the shots on the algorithms and formats that determine how a brand gets presented to its customers. The platforms also control the data that shows how effective a brand’s campaign was. Finally, it seems as though all social media platforms fall back on advertising: It’s really the advertising that brings brand sales.

Social media sites may have the upper hand because they can integrate brands into a consumer’s other social media activities, like browsing Facebook for the latest in their loved ones’ (and barely-known ones’) lives.

Moving more social media “in-house” might be an involved and expensive undertaking. But it fits into the trend of brands exerting more control over their online brand reputation management Online Brand Reputation Management: New Trend. For example, more than half of all unique applications for new gTLDs were submitted by brand owners and strategic companies who are now strategizing on ways to communicate with their consumers via .BRANDs and other new gTLDs.

Perhaps a JaneDoe.NIKE Pinterest-inspired page would help customers play with looks that they can then purchase. Maybe universities will offer Instagram-inspired pages like JohnDoe.MIT that offer students a sort of yearbook of classes and events.

Offering authentic products, good security and engaging content – that perhaps draws upon social media features – may be a winning combination for some .BRANDs.

How to Turn a Closed Generic gTLD Into a Restricted One

ClosedSignAs the New gTLD Program has rolled out over the course of the past few years, the Internet Corporation for Assigned Names and Numbers (ICANN) has made a number of program changes along the way. One of these changes disallows closed, generic gTLD applications, such as Amazon’s application for .BOOK.

Now, applicants for closed generics must decide how to proceed: whether to open their generic strings to the public, limit registrations to a defined portion of the public, withdraw the application, or sell it.

While some applicants for closed generics are already considering selling their strings to operators more experienced in running open registries, others are weighing the costs of revising their original business plans and operating restricted registries.

Despite the added work involved, this middle ground can provide as valuable a platform for innovation as closed and open registries.

The Internet Corporation for Assigned Names and Numbers (ICANN), which oversees the New gTLD Program, announced the prohibition against closed generic gTLDs last October. Earlier in the year, ICANN’s Governmental Advisory Committee (GAC) had identified over 100 generic strings that it said were contrary to the public interest. The ICANN board endorsed the GAC advice but noted it would not apply if an applicant could demonstrate the closed registry would serve the public interest.

A restricted gTLD won’t be the same as one populated by a single-registrant, speaking with one voice. But nor will it dilute the registry operator’s central message, purpose, or intention, the way an open generic might.

The traditional gTLD space is filled with successful restricted registries — .GOV and .EDU are the most prominent examples — so ICANN’s decision doesn’t have to be the death knell for applicants of closed generics. Those applicants can still build an intuitive and meaningful restricted namespace.

The most obvious benefit of operating a restricted registry, as is the case with an open registry, is the potential for profit, though registries will have to carefully weigh potential profits against the cost of running the registry. Of course, determining the potential profitability of a registry is exceedingly difficult, as the market changes constantly. But applicants can take a number of steps to increase their chances of financial success.

Restricted registries can take advantage of options available to all applicants to strengthen their exclusivity. They may, for example, reserve up to 100 names for promotional purposes before going live. They also may reserve any number of second-level domains as “premium names,” which can be sold at higher prices, adding to the proprietary nature of the string.

Operators of restricted registries also must work closely with their registrars to enforce the restrictions they impose. Without enforcement, the restrictions will be meaningless. And the registry operator must understand that a restricted gTLD may not discriminate against otherwise eligible registrants, such as competitors.

The Registry Agreement and Registry-Registrar Agreement are the primary places a registry must clarify its new policies as an open or restricted registry. Clarifications must also be made to the Acceptable Use and Takedown policies.

A registry that makes the necessary adjustments to run a restricted generic may reap the benefits, despite having had to abandon its original plan and adopt a new one. As with other types of gTLDs, association with a successful new string can open new avenues for extending a brand, supporting new business models, and creating unique marketing opportunities.

If a new gTLD is well maintained and provides high-quality, relevant content, the operator of that space may be viewed as a trusted, reliable, and useful source of information, which in turn creates demand, and thus profit.

 

Pay No Attention To That Trademark Behind The Curtain

This week’s World Intellectual Property Organization (WIPO) decision began when a Russian mobile app developer, a Hong Kong-based wall poster company, and a UDRP panelist walked into a bar. Okay, okay – I’ll spare you the sad attempt at an IP joke, but this week’s decision does involve the above-mentioned parties and the domain name www.ifunny.com.

MeninBar

The Complainant, a Russian mobile app developer, Okruzhnost LLC of Penza in the Russian Federation, has been using a website associated with the domain name www.ifunny.mobi since 2011 to sell its mobile applications and software. The Respondent holds trademarks for IFUNNY in Russia (registered in 2012) and the United States (registered in 2013). As the Complainant argues in section 5.A. of the complaint, “The use of “ifunny” as a keyword in Google searches increased significantly three months after the Complainant launched its “www.ifunny.mobi” website and related application. The Complainant therefore argues that the word “ifunny” gained recognition and secondary meaning in connection with the Complainant’s products, and had become well-known by the time the Respondent acquired the Disputed Domain Name in August 2012.

Since 2009, the Respondent, Six Media Ltd. Of Hong Kong, has operated a website at www.fakeposters.com, to which www.ifunny.com redirects, that sells “humorous” images and posters. The Respondent argues that it registered www.ifunny.com in 2012 after it failed to acquire www.funny.com, and that it chose ifunny.com because it was generic and offered “broad” appeal. The Respondent also filed for a trademark for iFUNNY in Hong Kong in 2013, and “contends that it cannot be found to have purchased the Disputed Domain Name in order to target the Complainant, since the Complainant’s IFUNNY trade marks were not registered until a year after the Disputed Domain Name was acquired by the Respondent.”

While the 3-member Panel found that www.ifunny.com is confusingly similar to the Complainant’s trademark, it also held that the Respondent had demonstrated rights to the domain name (rendering the need to decide on the issue of bad faith – the third issue in domain name disputes – unnecessary).

The most striking feature of this case, from the legal perspective, is that the Panel accepted the Respondent’s argument that the term iFUNNY is merely generic for humorous web content but completely overlooked the fact that the Respondent had applied for a trademark registration for IFUNNY in Hong Kong!  It is one of the most fundamental concepts in trademark law that a generic term is not capable of functioning as a trademark because the public doesn’t view it as a true “brand” but, merely, as the common name of the product or service (e.g., fruit, computer, boat, etc.).  By applying for a trademark registration, the Respondent was claiming that the term iFUNNY is actually not generic but functions as a brand name for its humor services.  One could argue whether the addition of the letter “i” really changes the generic nature of the word “funny” but I feel the Panel here owed it to the parties to at least address this inconsistency in the Respondent’s position.

This case also speaks to the need for business owners to pay attention to the top-level domain when registering domain names.  While the Respondent was wise to register its branded domain name in the gTLD of “.MOBI”, since that reflects its mobile-related services, the Respondent should also have obtained the domain name in the popular .COM TLD in order to prevent other companies from registering the name.  While it is not necessary to register a domain name across all TLDs all of the time, it is important to make a strategic decision about which ones to register defensively in and, as new gTLDs launch, when to use the Trademark Clearinghouse.

Hell Hath No Fury Like An IT Technician Scorned

In what sounds more like a soap opera than an intellectual property dispute, the UDRP panelist in this week’s National Arbitration Forum (NAF) decision ordered the domain krsattys-riv.com to be transferred from the respondent to the complainant, a California law firm known as Kinkle, Rodiger and Spriggs.  The firm actually owned the domain at issue here but was undergoing a rebranding effort, which involved changing its domain name to a simplified version: krs-law.com.  However, the firm wanted to maintain the old domain since it was still used by many clients and their billing systems.

Complainant asked its IT technician, the respondent in this case, to renew the old domain, which was about to expire.  However, about that time, a small number of attorneys decided to leave the law firm and start their own practice.  Among them was an associate to whom the respondent was married.  Once this departure was announced, the firm advised respondent that his services would no longer be required, and he was let go.

Respondent’s replacement in the IT role later informed the firm’s management that the old krsattys-riv.com domain had expired and was then, surprisingly, registered by the respondent after he’d left the firm.  This caused havoc with the firm’s name transition due to clients’ ongoing use of the old domain. The firm had to scramble to educate its clients to use the new domain.

Very quickly, and through the dust of IT mayhem, the firm’s management turned its infuriated gaze towards respondent, who happily offered to sell the old domain back to the firm, claiming that he had legitimately registered it after its expiration and that he “should not be prevented from the full potential investment opportunity.”  The case makes no mention of the amount asked by the respondent but it almost doesn’t matter since, once angered, lawyers’ rage can rarely be soothed by money alone. Blood must be drawn and honor must be satisfied.

After finding that the domain was confusingly similar to the law firm’s common-law trademark, the panelist turned to the question of respondent’s legitimate interest in the domain.  He found that the respondent was making no use of the domain for any purpose other than to sell it back to Complainant and was not preparing to use it in a bona fide business venture of his own.Noir and NAF

Next, the issue of bad faith was addressed and, predictably, the decision did not go well for the respondent.  Complainant directed respondent, while he was still employed, to renew its registration of the old domain, and respondent replied that he would do so.  However, upon his dismissal from the firm, he failed to inform complainant that he hadn’t carried out the request. After the domain name expired, the respondent registered it for himself.

From this pulp fiction set of circumstances, it seems apparent that respondent hatched this sordid plot the moment he was let go as revenge for his firing.  He figured he’d get back at them by making them pay for the domain but, in the end and as happens with all storybook ill-doers, respondent’s situation quickly unraveled and he was left staring at the unsympathetic face of a UDRP panelist.

The moral of the story? Law firm romances are fraught with risk, and if you want to extract money from a lawyer who’s done you wrong, get some really good dirt on them and extort them the old fashioned way!

When New Top-Level Domains Meet Legacy Top-Level Domains

By Jingwei Wang and Madeline Hurley    

The average Internet user is surely familiar with that twinge of annoyance felt when confronted by a red error message after typing an incorrect email address or password. But annoyance could turn to technologically fueled rage if email addresses containing new top-level domains (TLDs) are incompatible with the sites users are trying to access.

The Internet community is predicting a new age of innovation with the advent of 1,400 new TLDs composed of brand names, geographic locations, and generic terms – such as .WALMART, .LONDON, or .TATTOO. In addition to opening up vast tracts of Internet real estate where the public and businesses will be able to buy, sell, congregate, communicate, and learn, in many cases, new TLDs will offer more secure, intuitive, and streamlined paths to the content users are looking for.

Since their introduction late last year, the steady growth of new TLDs, and second-level registrations within them, promises a bright future – IF a few kinks get worked out. One of those kinks is the potential incompatibility between email addresses in new TLDs and websites anchored to legacy TLDs, such as .COM and .ORG.

The number of high-traffic websites and apps still incompatible with the new gTLDs indicates a broad lack of awareness of the potential problem. Social networking sites such as Facebook and LinkedIn don’t recognize new gTLDs, meaning anyone with a new gTLD email address will be blocked from registering an account. Countless other websites and apps risk losing customers and therefore profits if they don’t make the necessary adjustments.

Linkedin

Imagine if a large community-based organization holding a convention tries to make online hotel reservations at a Hilton. The organizer is using a .COMMUNITY address, but after clicking the submit button, gets an error message. Hilton might lose thousands of dollars in potential business. Marriott, on the other hand, which has adjusted its systems to be compatible with new TLDs, could earn a loyal new TLD-using customer.

Hilton

Some of the most popular consumer mobile apps such as Venmo, Uber, Skype and Snapchat lack compatibility with the new TLDs. If you have a new TLD email address, you might find yourself the odd one out while all your friends are snapchatting unflattering selfies to each other from across the room.

Skype

It’s too early to measure the true impact of TLD incompatibility. But it will become increasingly problematic as new TLDs gain in popularity, particularly for business offering their goods and services online.

3 Reasons to Properly Administer Your Domain Name Portfolio

shutterstock_157028177The Internet is many things to many people, but the one thing it’s not is static. The digital space continually changes in ways that force businesses to adapt quickly or fall behind the competition. A solid domain name portfolio and a dynamic domain name strategy create the environment in which businesses can:

  • maximize their online presence,
  • optimize revenue, and
  • shrink costs

You can identify what’s working, what’s not (and why), and what might still be missing by looking at your existing domain name portfolio and figuring out which domain names are advancing your company’s business goals and/or protecting its brands online.

Here are three reasons to evaluate a domain name portfolio so it adds value to your business:

 

  1. Increase Direct Navigation Traffic to Websites
    You may be missing some key domain names that are intuitive for your audiences that you need to register. Some might be available and easily registered. Third parties might already own others, but a brand owner may win back those containing trademarks through cease-and-desist letters or dispute resolution procedures. Targeting infringing domain names of strategic importance to a company’s brands can result in a high level of recovery success while containing enforcement costs.

shutterstock_170522588

  1. Enhance Brand Positioning and Protection
    Even if you own the right domain names, they may not deliver optimum value because they’re not resolving to the right content. A domain name that resolves to relevant, expected content contributes value to a brand, since it ensures that Internet users ultimately arrive at the content they were seeking in the first place. Internet users who find what they want are more likely to convert to sales and – because they are navigating directly to the domain name rather than clicking on an advertisement for which the company must pay – they are less expensive to acquire.

    On a less tangible level, Internet users who find what they are looking for will have a positive online experience, which helps strengthen a brand’s overall reputation.

    Given the financial risks and costs of combatting a fraudulent third-party or bad actor registration, your company may want to register and maintain a domain name proactively, even if the company has no intention to operate it. While these costs may seem cumbersome, in the long-run your company will benefit from judicious, prudent defensive registrations.
    shutterstock_158506547

  2. Cost Savings and Potential New Revenue Opportunities
    You might have domain names that you don’t need and that won’t pose a big risk in the hands of someone else. You can let those go and save on the maintenance fees. To do this, companies must first determine their tolerance for risk. By cutting domain names, a company can save on renewal fees but leaves itself open to possible infringement. For low-quality or irrelevant domain names, this should not be a big concern.

    These decisions should be made with your legal department’s participation. These unnecessary domain names may even turn into a new source of revenue. Many companies have domain names they can sell for profit to other businesses or individuals who have a vision for the domain name in question.

 

Conclusion: Why Managing Your Domain Name Portfolio Matters

Maintaining a healthy portfolio involves monitoring the evolving online space for developments relevant to your business – including potential new domain names in new generic top-level domains.

So the question stands: Are you where you need to be online?

Right Result, Wrong Reason

This week’s World Intellectual Property Organization (WIPO) decision involves a retired German physician, an annual tobacco fair, and some curious reasoning by WIPO panelist Stephanie G. Hartung, who denied the complaint.

The domain name at issue in this complaint is intertabac.org. For over three decades, the complainant – Westfalenhallen Dortmund GmbH of Germany – has hosted annual trade fairs under the name “Inter-tabac” for tobacco and smoking products. According to the complainant, Westfalenhallen Dortmund is the registered owner of several trademarks for “Inter-tabac” and of intertabac.com, inter-tabac.com, intertabac.de, inter-tabac.de, inter-tabac.net and inter-tabac.org.

Homepage of Interbac.org as of 6-9-14
Homepage of Interbac.org as of 6-9-14

The respondent, Mr. Johannes Spatz of Berlin, is a retired physician who established and continues to co-chair a non-profit foundation “aiming at the furtherance of public health by encouraging a smoke-free life and by fighting the global tobacco epidemic.” He registered intertabac.org in 2013, which leads to a site with anti-tobacco industry content – including a petition and open letters to Dortmund’s mayor regarding Inter-tabac. Two of the three UDRP requirements were decided in the complainant’s favor: the panelist found that intertabac.org is confusingly similar to the complainant’s trademark and that the respondent “does not necessarily” have rights or legitimate interests to the domain name. However, the panel concluded that the Complainant failed to demonstrate the third UDRP requirement, registration in bad faith, explaining that the respondent did not register the domain name for the purpose “of transferring it to Complainant or any of its competitors”.

This is a rather odd decision that reached the right result but for the wrong reason. Under the “rights or legitimate interests” factor of the UDRP one of the things to consider is whether the respondent is making a fair use of the domain name, such as a gripe website. The Complainant did not address the question of fair use, nor did the panelist appear comfortable directly relying on the fair use argument as the basis for her decision. Instead, Ms. Hartung punted the issue, explaining that “this dispute is better suited to an appropriate court”.

Oddly, the panelist does establish in the decision that “it is undisputed between the parties that Respondent has registered and is using the disputed domain name for purposes of exercising Respondent’s right to free speech granted by the German Constitution.”  This is the very definition of “fair use”, so it’s especially curious that the panelist ducked the issue and, instead, relied on a vague recitation of bad faith factors and concluded that “none of the specific circumstances identified in paragraph 4(b) of the Policy applies in the case at hand.”

This decision sets an odd precedent for future complaints regarding criticism or protest sites, at least in Germany.

When It Comes to Domain Names, It’s Not Easy Being Green

This week’s National Arbitration Forum decision involves the domain names greencycler.com and thegreencycler.com. The complainant, Greencycle, Inc., holds a trademark for Greencycle and uses the domain name www.greencycle.com to offer mulch, soil and stone. The respondent, Gail Loos/Ingenious Marketing, uses the domain names at issue to market a counter-top composting device. The respondent applied for a trademark for Greencycler in 2010, but the USPTO rejected the application in 2011, citing likelihood of confusion with the already-registered trademark for Greencycle (held by the complainant).

The panelists in this case found that the complainant satisfied the first of three elements of the UDRP: The complainant successfully demonstrated that the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights.

However, the panelists found that the complainant did not establish the other two required elements, that the respondent has no rights or legitimate interests in respect of the domain name and that the domain name has been registered and is being used in bad faith.

A quick look at the respondent’s website suggests that the Greencycler is a legitimate product – an ‘award-winning’ kitchen scrap composter – and that it is also a very different product from the landscaping materials offered on the complainant’s site. According to the Decision Findings, the respondent attempted to “negotiate a co-existence arrangement [with the complainant], but no agreement was reached”. As opposed to cybersquatted or typosquatted sites, the respondent’s site does not include pay-per-click ads that lead to products or sites that compete with the complainant’s products.

Respondent's homepage at www.thegreencycler.com  as of 5.30.14
The respondent’s homepage (www.thegreencycler.com) as of 5.30.14.

Ultimately, there just wasn’t enough – if really, any – evidence that the respondent had registered the domain name in bad faith. However, the respondent felt that the complainant was acting in bad faith by bringing the complaint and alleged that the complainant was engaging in reverse-domain-name hijacking.

Though the panelists did not find that the complainant was engaging in reverse-domain name hijacking (put simply, harassing the competition through filing complaints), the case shows what I feel is an inappropriate and overly-aggressive use of the UDRP that had no chance of success from the start.  This is really just a routine conflict between two companies in similar fields, and it’s my opinion that the complainant used the UDRP only for leverage – perhaps to scare the respondent into negotiating a settlement of the broader trademark dispute.