In a recent UDRP proceeding, the popular X-Sports manufacturer Vans, Inc. tried to gain the rights to the domain name <protechelmet.com> from the company, Military and Rescue Supply. Despite the evidence provided by both sides, a team of three Panelists decided that this dispute is not the type covered by the UDRP and should be resolved by the courts. Due to this decision, the domain name for now rests with Military and Rescue Supply. Read more
Posts from the ‘ICANN’ Category
In a recent UDRP decision, the Estate of James Brown submitted a Complaint requesting that they be transferred the rights to the domain name jamesbrown.com from the Respondent, Owned by LAC Music, represented by Gregory J. Chamberlain. A three-member Panel was chosen to resolve the dispute; the result being that the domain name rights were not transferred and currently reside with Owned by LAC Music. Read more
In a UDRP decision last week, the Panel ordered that the rights to the domain name vacationinwilliamsburg.com remain with the respondent, Capital Marketing Rock Hill. This ruling was issued after only examining the first of three elements in determining if a domain name should be transferred or canceled: “(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.” Nowhere in the Complaint does the Complainant, Vacation Center, LLC, allege, much less provide evidence to prove, that it has rights in a trademark or service mark which is identical or confusingly similar to the disputed domain name. Read more
In several cases decided recently, the UDRP transferred the rights to several domain names using common misspellings to the complainant. For example, in one decision dated September 30, Google Inc. gained the rights to 37 domain names from Zhou Murong. These 37 domain names ranged from common misspellings to domain names actually containing the word Google. Examples include: gogledeals.com; googeldeals.com; gooogledeals.com; and my personal favorite, googeebooks.com.
Other sites have had similar problems with common misspellings of their websites being used to steal traffic from their actual site. Other examples where the rights to the domains were transferred to the owner of the correctly spelled name are:
- Etsy, Inc. received the rights to etsyy.com
- Enterprise Holdings, Inc. received the rights to
With all three of these cases, there have been two things in common. First, the respondent has not responded to the filed complaint. And secondly, each misspelled website was simply a host for third party links, occasionally featuring competitor links for the website they were misspelling.
As discussed with other similar cases, the case for transference of the domain rights is a lot easier to make when the respondent does not respond to the complaint. Thus making it a lot easier to establish that the three points necessary for transference:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In each case, it was fairly easy to prove all three points due to the nature of the website and fact that the respondents did not respond to the complaint. Because of the common misspellings of the websites in question and the fact that each company had trademarks for their names, it was easily shown that each website was registered in bad faith and was simply created to steal potential traffic from the correctly spelled website. Each case also resulted in the rights to the domain name being transferred to the owner of the domain they were misspelling.
The Internet Corporation for Assigned Names and Numbers (better known as ICANN) approved the use of 100′s of new customizable top-level domain names a few months ago. Since that time, companies and internet prognosticators alike have been debating the ramifications of such a dramatic change. Here are the basics:
- Applicants (who pay $185,000) will be able to apply to, in essence, become a registry of a new TLD of their choosing.
- Applicants can request a generic word such as “.pizza” or a trademarked word such as “.Dominos.”
- There will be an opportunity for the public at large to object to an application (but such an opportunity could be costly).
- Based on how the system is set up, there will probably be a rush to file for new extensions – especially with generic words.
- ICANN promises to evaluate applications and not award top level domains subject to another company’s trademark.
These new TLD extensions could open a can of worms the internet has not seen for awhile. First, what happens if multiple companies hold the same trademark (think Delta Airlines and Delta Faucets) and both apply for .delta? What happens if Pizza Hut and Dominos both apply for the generic “.pizza” at the same time? ICANN has a process and evaluation factors to resolve these issues, but they do not seem to be specific enough yet to answer these questions.
I would not be surprised to see trademark suits spawning from the new TLDs. We will have much more on this in the coming months.
What are your thoughts?