udrp

Cadillac Domain Name Dispute

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process created by ICANN to resolve domain name disputes in a quick and inexpensive manner.  Any rights-holder may institute a UDRP proceeding if they feel that a domain name registered by another party infringes upon their intellectual property rights.  A complainant in a UDRP proceeding must establish three elements to succeed:

  • The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
  • The registrant does not have any rights or legitimate interests in the domain name; and
  • The registrant registered the domain name and is using it in “bad faith”.

A UDRP adjudication panel places great weight on whether the registrant registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark.  

However, in a case that attracted some media attention, General Motors recently lost a UDRP action involving the domain name mycadillac.com, despite the domain holder offering to sell the domain for up to $57,000.

The domain holder contended that his domain name was not similar enough to the Cadillac Trademark to warrant a dispute. The name “Cadillac” is seen in multiple locations outside of GM’s ownership. For instance, the city of Cadillac, Michigan is named after the founder of Detroit, Antoine de la Mothe Cadillac. Furthermore, Cadillac Mountain can be found in Maine, and Cadillac Ranch in Arizona.

He also contended that mycadillac.com is not profiting off the Cadillac Trademark in any way, shape or form. He states that “[t]here is no explanation in the Complaint as to why a business that was established countless years before I had registered the domain name mycadillac.com (nearly 12 years ago) delayed until 2012 to contact, me, the owner of a domain name, which was so manifestly adapted to suit its business, or why Administrative Proceedings were not brought before now – if the domain name was considered to be a justifiable case of abusive registration.”

Here is the one member panel’s statement:

“Although Complainant states that Respondent has a portfolio of 83 domain names, Complainant has not argued that any of them other than the Disputed Domain Name prevents a trademark owner from reflecting its mark in a corresponding domain name. ”

“Accordingly, the requisite “pattern” of conduct has not been established”.

“With respect to paragraph 4(a)(iii): Given that Complainant has failed to show how Respondent may be considered a “competitor,” and further, as discussed below, Respondent’s website using the Disputed Domain Name does not contain any links that Competitor alleges are competitive with Complainant’s own goods or services, the Panel is not persuaded that Respondent is a competitor of Complainant and, accordingly, this factor is unproven”.

“The Panel finds more challenging the bad faith factors described in paragraphs 4(a)(i) and 4(a)(iv)”.

“Given the long and far-reaching use of the CADILLAC Trademark, the Panel is not so naïve as to think that Respondent was unaware of the trademark when he registered the Disputed Domain Name or that the Disputed Domain Name, standing alone, could be considered by many to be anything other than associated with Complainant. However, there is nothing in the record to contradict Respondent’s assertions that he registered and is using the Disputed Domain Name solely because of its connection with the personal and geographic name “Cadillac” and not because of Complainant’s use of the word as a trademark”.

“It may be that by using the Disputed Domain Name in connection with a website that contains links to Michigan, home state of the city of Cadillac, Respondent has merely attempted to disguise his intention in registering the Disputed Domain Name – much as the early cybersquatter Dennis Toeppen displayed photographs of the city of Pana, Illinois, on a website using the domain name <panavision.com>. Panavision International, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998). However, in the Panavision case, the defendant’s actions and convoluted explanation were clearly a pretext for his actual motive, given that the disputed domain name was not only identical to the plaintiff’s trademark but not actually the name of the city depicted on the website and, as the court said, the defendant’s “’business’ is to register trademarks as domain names and then sell them to the rightful trademark owners” – something that Complainant in this case has not proven”.

“In any event, it would appear as if Respondent has taken precautions to avoid using the Disputed Domain Name in any manner that might cause a likelihood of confusion with Complainant”.

“Such actions eliminate any finding of bad faith pursuant to paragraph 4(a)(iv)”.

“Further, although Respondent has offered to sell the Disputed Domain Name, for as much as $56,665.00 – a figure that presumably is “valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name” – the record does not indicate that Respondent’s “primary” purpose in registering the Disputed Domain Name was to sell it to Complainant or a competitor of Complainant”.

“Indeed, Respondent has provided an uncontradicted explanation related to his registration of the Disputed Domain Name, that is, that it is related to the personal and geographic names associated with the word “Cadillac,” not Complainant’s trademark:

“In light of these concerns, this Panel notes that “[i]t may be that Complainant could develop evidence of bad faith and lack of legitimate interest in a legal proceeding that would allow more evidentiary development. The Policy, however, was not designed to transfer domain names in every case that a trademark owner might ultimately win.” Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105 (April 30, 2002)”.

“Finally, given Respondent’s arguments, actions and lack of actions, the Panel is also unconvinced that bad faith exists pursuant to the doctrine of “opportunistic bad faith.”

“Google It”: The Search Engine’s Trademark May Be a Verb, But It’s Not Generic

Google defeated a claim that its GOOGLE trademark was generic, in Elliot v. Google Inc., a recent case from the United States District Court for the District of Arizona.

In 2012, Google filed a Uniform Domain Name Dispute Resolution Policy (UDRP)Complaint against the owner of several hundred domain names that included the word “google.” The UDRP’s Administrative Panel ruled in favor of Google…

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[OOC:]

HI. I’m so sorry, I’ve been so painfully busy. Graduation is coming super quickly and my boyfriend leaves for the Army in just a couple weeks, so I’ve been slammed with work and my time has been totally occupied.

I apologize for my absence, I’m working on my time management as we speak!

Facebok.com for Facebook.com

ICANN has sent a Notice of Breach to domain name registrar EuroDNS for its failure to transfer a client domain name after an adverse UDRP decision.

In September 2010 a EuroDNS client lost a UDRP for Facebok.com (with one ‘o’). Domain name registrars have ten days to transfer a domain name after receiving communication from the UDRP provider of an adverse decision unless the respondent files a lawsuit over the domain name.

Facebok.com is a common typo for the popular social network. It forwards to a page offering a “Facebook survey”. 

Domaineq: Update: As of this writing, Facebok.com forwards to a parked domain page. Buying typos of popular words or brands have been popular for domain investors. Do you think it is as popular today? Considering UDRP decisions like this?

BLIP Scores Victory in UDRP Decision Against Chick-fil-A

BLIP, partnered with the law firm of Lewis & Lin, won a UDRP case against Chick-fil-A.

The national fast food chain argued that BLIP clients Jason Selvig and Davram Stiefler had no rights in the domain name chickfilafoundation.com. Selvig and Stiefler, two New York based comedians and parodists created the website chickfilafoundation.com to criticize the controversial views expressed by Chick-fil-A and its President with regards to same-sex marriage.

Chick-fil-A’s parent company, CFA Properties, Inc. brought the UDRP claim challenging Selvig and Stiefler’s rights in the domain name, arguing that it was confusingly similar to their trademark and that it was registered in bad faith. In response, BLIP, with Lewis & Lin, argued that they had a legitimate right and interest in the domain name as they were simply exercising their First Amendment right of free speech and their right to criticize the controversial views expressed by Chick-fil-A. They also argued that the company could not prove bad faith, as Selvig and Stiefler were not seeking to commercially benefit from the website. The UDRP panel agreed, stating that “the Panel is not persuaded here that Respondent’s registration and use of the disputed domain name has been shown to be for purposes of capitalizing on Complainant’s trademark.”

This was a tremendous victory for BLIP, Lewis & Lin, and anyone concerned with free speech on the internet. The full decision can be found here.

By Adam Marsh

Hyrule and Hyperlinks: The Battle for Zelda's Domain

If you know anything about me, you know (or you can probably guess) that I’m an avid gamer. While a lot of game series come and go, there is one that continues to have a place in my heart: Nintendo’s Legend of Zelda franchise. In celebration of today’s official release of The Legend of Zelda: A Link Between Worlds (read: There goes my weekend!), I thought it would be fun to bring you a law post that was Zelda themed.

What Is the Legend of Zelda?

The Legend of Zelda is a game series that follows the adventures of a tunic-clad, sword-carrying adventurer named Link in the imaginary, far off lands of Hyrule. While the games take place in various time periods and (save for some exceptions) different incarnations of Link, they all seem to focus around a similar storyline—the fulfillment of a prophecy of thwarting evil over the lands of Hyrule and saving the princess Zelda.

The Legend of Zelda franchise is a puzzle-based game series that packs a powerful punch for all age groups. It forces players to think out of the box and to solve puzzles using the resources they gain throughout the gameplay. For those of you who have never played the series before, I recommend picking up a copy of the Legend of Zelda: Ocarina of Time (“OoT”) before anything else. This game, which was first released in 1998 (and now has a Nintendo 3DS re-release), is a perfect example of how thoughtfully executed the storyline is, and how innovative the gameplay strives to be throughout the entire series.

Speaking of OoT: the late 1990’s are exactly where today’s legal blog post begins. Trouble may have been afoot in Hyrule, but back in 1999, it was present on the Internet as well. Instead of swords and magic, this legal battle was fought via arbitration.

“You’ve Met With A Terrible Fate, Haven’t You?”

Our story starts in 1999, when a 15 year old Zelda fan named Alex Jones started up a fan website under the URL: legendofzelda.com. The website, which was named after the franchise, was a space on the Internet where Alex wanted to talk with other like-minded Nintendo fans about The Legend of Zelda. The website discussed the Zelda franchise, had forums for discussion, and even had links to the official Nintendo website. At the bottom of the page, Alex made sure to place a disclaimer that his website was not affiliated in any way to Nintendo and that it was merely for fan purposes only.

Nintendo of America, Inc., which was the legitimate owner of “THE LEGEND OF ZELDA” trademark, saw Alex’s website and wanted to claim the domain name for itself. The company filed a formal complaint in the summer of 2000 with the Internet Corporation for Assigned Names and Numbers (ICANN) to try and get the rights to the website. ICANN responded with an administrative panel decision in fall of 2000 that might surprise all of us, considering the circumstances.

Alex, who had used this website merely for fan purposes only, went against all odds and actually got to KEEP the legendofzelda.com website, despite Nintendo’s claims of cybersquatting and infringement. (Of course, you can read the whole decision here). While today the URL points to a Facebook group, this was a big win for “the little guy” with respect to domain name disputes.

How Domain Name Disputes Work

So, how do domain name disputes work in the first place? Is it normal for a big company to sue “the little guy” over a few words that point to a location on the internet?

In short, the answer is: yes. This is especially true when the person bringing the complaint is someone that owns the official trademark or if the trademark is something that’s acquired “famousness”.

Domain disputes are somewhat common and are a tactic for brand preservation. Like a parcel of real land, domain names are a very specific piece of property. Even with the new gTLD’s on the way in the coming months, this continues to hold true. There is nothing in the whole world (or in cyberspace for that matter) that can match the exact placement of a particular domain. Once a domain name like legendofzelda.com is taken, there is no one else in the world that can own it.

The only way for another owner to take over this domain is to :

  1. purchase the domain from the original owner
  2. wait for the domain name to lapse and to take it when it is released; or
  3. file a domain dispute with ICANN

Because Nintendo was the rightful owner of THE LEGEND OF ZELDA trademark, it decided to take option 3, and to fight Alex in a legal battle over the ownership of the website.

All website disputes are handled via arbitration hosted and operated by ICANN. Arbitration is a way to resolve legal disputes outside of a courtroom (and, If you’ve ever purchased a domain name…you’ve signed an agreement that makes this dispute resolution process mandatory.) With each domain name dispute, ICANN assigns one person (or a group of people) to read the case and to decide, based on the circumstances, whether the person bringing the complaint is entitled to take over the domain.

Domain Name Dispute Criteria

Domain Disputes are handled on a case-by-case basis…and they are based very heavily on the fact-based criteria surrounding the issue. In order for a domain name dispute to be successful, the ICANN arbitrator (or panel of arbitrators) must decide that the person bringing the domain name dispute showed the following:

  1. the domain name in question is identical or confusingly similar to a service mark or trademark to which the complaintant has rights;
  2. the current owner of the domain has no legitimate interest in the domain name; AND
  3. the domain name has been registered or is being used in bad faith.

As you can see, the criteria for domain name disputes are sometimes a murky and difficult thing to prove.

In the case of the Zelda fan site, Nintendo was able to prove that:

  1. the domain name was similar to the trademark in question (of course, legendofzelda.com is the same thing as the LEGEND OF ZELDA trademark). AND
  2. that Alex had no “legitimate interest” in owning the domain name.(Say What? For those of you confused about why Alex had no legitimate interest in the free speech surrounding his ownership of the website: the arbitrator argued that a trademark owner’s interest in protecting and marketing their registered trademark is greater than the need for a fan club to express their approval of a product when the domain name is identical to the registered trademark)

BUT, Nintendo struck out when it could not prove that Alex used the website in bad faith.

An arbitration board generally judges “Bad Faith” for purposes of domain disputes based on the domain name owner’s actions. If the domain name owner tries to sell the website for monetary gain, or to disrupt the complaining party’s business in any way, then it is generally considered to be a domain name that is owned in “bad faith”.

Here, it could not be said that a 15-year-old Nintendo fan had reserved the domain name in bad faith. Instead, the opposite was found to be true. Alex bought the domain name without intending to profit in any way from it, and instead used the website to promote and educate the world about the Legend of Zelda franchise. If anything, Nintendo benefitted from this boost of fan support.

The arbitrator in this case, after not finding a bad faith ruling, dismissed the case. Alex, today’s hero, got to keep the website. As I mentioned, to this day: Nintendo still does not own the legendofzelda.com domain.  

Final Thoughts

I hope that you enjoyed this little story of Nintendo of America, Inc. v Alex Jones. The truth is, these types of domain dispute battles are pretty common. A trademark owner is responsible for policing his brand, and so domain name disputes are part of the process. If you ever find yourself staring a cease and desist or a domain name dispute case in the face, you should definitely contact a lawyer who is knowledgeable about internet law. While Alex’s case may have been an ideal outcome, not all cases are judged the same way. Depending on the arbitrator or the situation, things can come out much differently.

Well, that’s it for today folks…time to get started on the all new Zelda adventure! Oh, and –Happy weekend!

Why Registering (CompanyName)Sucks dot com Is a Thing of the Past

It used to be the biggest fear for a company. Someone would come along and register a domain name with their trademarked term in it followed by a derogatory word. Since ICANN launched the Uniform Domain-Name Dispute-Resolution Policy (UDRP) however, that practice has basically become a futile waste of money and time.

Read more: http://knowem.com/blog/2012/06/26/why-registering-companynamesucks-com-is-a-thing-of-the-past/

You are invited to participate in a webinar on the current state of the Uniform Dispute Resolution Policy (UDRP). The ICANN Policy Staff is holding this Webinar on Tuesday 10 May at 15:00 UTC. The webinar will explore the current state of the UDRP. Attendees will hear the viewpoints from experts in the field on the effectiveness of the UDRP, and whether it should be modified or amended.
—  ICANN Invitation, Current State of the UDRP Webinar
Georgeanna sells KRFT 84.27: Heinz Files UDRP On KraftHeinz.com, Registered Same Day Merger Was Announced

“Just two month after announcing its merger with Kraft Foods (NASDAQ: KRFT) , H.J. Heinz Company (NYSE:HNZ) has filed a UDRP to gain control of the domain name KraftHeinz.com The domain name was registered on March 25, 2015 the same day the companies …” said Rhiannon to Francie on Wednesday, June 3, 2015.

“My dear Miss Francie,” said Rhiannon, “have you heard that RAG went down to 829.98?”

“Cboe Russell 3000 Growth Index.”

Francie replied that she had not.

“But it did,” said Rhiannon. “Hudson Pacific Properties (HPP Unlike the better-known Dow Jones Industrial Average or S&P 500, membership on the Russell 3000 isnâ&#128;&#153;t selected by committee. Itâ&#128;&#153;s simply the 3,000 most valuable companies in the country. With 3,000 stocks making up the index, it gives a broad look at . …”

Francie, with perfect unconcern, made no answer.

 

  1. The domain name is identical or confusingly similar to a trademark or service mark in which the   complainant has rights
  2. The registrant has no rights or legitimate interests in respect of the domain name
  3. The registrant registered and is using the domain name in “bad faith”

UDRP (Uniform Domain Name Dispute Resolution Procedure)

Stolen Domain GPZ.com Returned To Owner Through Cybersquatting Claim

A successful UDRP cybersquatting claim has brought GPZ.com back into the control of its longtime owner, GPZ Technology.

The Mountain View company registered the domain in 1996, however it was allegedly stolen from its 1&1 domain name registrar account earlier this year and transferred to REG.RU LLC.

GPZ provided a police report to the panel, which determined that although the company doesn’t own registered trademarks for GPZ, it still had common law rights.

Here’s another great example of UDRP in action to benefit complainants. Oftentimes panelists will give plaintiffs the benefit of the doubt, especially when the defendant never responds to the original claim.

The full decision from the panel can be viewed here.

Must Read This Very Troubling UDRP; 18 Year Old Playworld.com Lost in UDRP After Domain Is Parked

Must Read This Very Troubling UDRP; 18 Year Old Playworld.com Lost in UDRP After Domain Is Parked via The Domains
from Domain Deal Plus http://www.thedomains.com/2015/05/23/must-read-this-very-troubling-udrp-18-year-old-playworld-com-lost-in-udrp-after-domain-is-parked/?utm_content=bufferebd44&utm_medium=social&utm_source=facebook.com&utm_campaign=buffer
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