Friday Roundup - Enjoy the Long Weekend

Today is the traditional start of Summer in the United States: the Friday leading into Memorial Day Weekend. Most offices in the US will be closed Monday, so plan accordingly.

Sunday also marks the 89th running of the Indianapolis 500 auto race. Back on June 11, 2003, the Indianapolis Motor Speedway prevailed in a UDRP case against the registrant of IndianapolisMotorSpeedway.com. To capture the true flavor of the 500, don't watch it on tv, but listen to it on the radio as you enjoy the first weekend of Summer outdoors.

Other news:

iTunes 'cybersquatting' row threatens Nominet authority (Silicon.com) - May 27

AOL Hit With Split Decision in UDRP Case (NAF Case FA463099) - May 27

4th Circuit Hearing Today on Fallwell.com Domain Name

This morning the U.S. Court of Appeals for the Fourth Circuit held an oral argument in the case of the domain name Fallwell.com. In August 2004, U.S. District Court Judge Claude Hilton granted summary judgment in favor of televangelist Jerry Falwell in an action brought by Christopher Lamparello, the registrant of the criticism website Fallwell.com. Lamparello appealed, and a copy of his Appellant brief is available here.

For more, see: Website Dispute Center of Hearing (NewsAdvance.com) - May 26

WIPO Denies UHJ.net Complaint

In a decision released earlier this week, WIPO Panelist Debra Stanek rejected a UDRP complaint brought by the National Spiritual Assembly of the Bahá’ís of the United States over the domain name UHJ.net. National Spiritual Assembly of the Bahá’ís of the United States v. Second International Bahá’í Council, WIPO Case D2005-0214 (May 8, 2005).

The Complainant argued that the letters "UHJ" stood for Universal House of Justice, which apparently is akin to The Vatican of the Bahá’í faith. Panelist Stanek determined that the letters "UHJ" were not identical or confusingly similar to the Complainant's mark. "The Panel finds that Complainant has not met its burden of establishing that Respondent’s domain name is confusingly similar to a mark in which Complainant has rights."

New UDRP Decisions

Several new decisions issued by the National Arbitration Forum are worth noting this afternoon:

1. Meguiar's, Inc. v. Target Online Inc., NAF Case FA435003 (May 20, 2005). A split three-member panel denied transfer of the domain name CarCrazy.com to the complainant, Meguiar's, Inc. The majority determined that Target Online had rights and legitimate interests in the domain name and did not register and use the domain name in bad faith.

2. Psichometrics, LLC v. Wolfwurks, LLC and James Russell, NAF Case FA451924 (May 23, 2005). Panelist Bruce Meyerson rejected a complaint brought against the domain name psichometrics.com, finding that the Complainant had not established that the disputed domain name was identical or confusingly similar to a trademark or service mark in which Complainant had rights. The Respondent, the former 51% owner of the company, was allowed to retain ownership of the domain name. The dispute is likely headed to court.

Monday Morning Update

Plenty of domain name related events this week. Two Domain Name Conventions: the Domain Roundtable Wednesday-Friday in Seattle and the T.R.A.F.F.I.C. West 2005 Tuesday-Friday in Las Vegas.
Press Release on Domain Roundtable available here.

Other news:
Commercial Geographic Domain Names Soon (SMH.com.au) - May 23
Losing Website Is Bad For Business (DetNews.com) - May 21
Finding The Right Domain Name (CrainsCleveland.com) - May 20
Major Domain Names Available in Bankruptcy Sale (Press Release) - May 18

Proposed ICANN Budget Released

Late yesterday ICANN published its proposed budget for Fiscal Year 2005-2006. This is a must-read document.

Panelist Says ThumpRecords.com Complaint Outside Scope of Policy

In a UDRP decision issued May 11, 2005, National Arbitration Forum Panelist Sandra Franklin denied a complaint brought on behalf of Santa Monica-based Thump Records over the domain name ThumpRecords.com. Panelist Franklin found that the complaint was a contractual dispute, outside the scope of the UDRP. Thump Records, Inc. v. WebPros, NAF Case FA446911 (May 11, 2005).

"Panels have determined, consistent with the aforementioned, that certain issues exceed the scope of the Policy and therefore are to be more properly resolved in courts of law. For example, Panels have held that contractual disputes, trademark infringement, breaches of fiduciary duties, employer/employee disputes, and other business disputes are issues that exceed the scope of the Policy...In the instant case, Complainant is asserting that Respondent is violating contractual obligations that it agreed to when it began hosting Complainant’s website located at the disputed domain name. Complainant concludes that this breach of contract is the sort of issue this Panel should properly resolve. This Panel disagrees."

The case is likely headed to federal court in California.

Friday Roundup

June Start For .AU Geographic Domain Ballots (ZDNet.com.au) - May 13
.Travel - A New Domain For the Global Travel Industry (ExpressTravelandTourism.com) - May 13
TheGlobe.com Completes Acquisition of Tralliance Corporation (BusinessWire) - May 12
Erie Politicians Fuming About Website (Pennlive.com) - May 12

New UDRP Filings:

American National Red Cross v. wwwRedCross.org, NAF Case FA472006.
Wine-Spectator.com, NAF Case FA470935.
Kasparov.org, NAF Case FA471047.
Pictionary.com, NAF Case FA473071.
eBillyJoel.com, NAF Case FA472063.

Revisiting the STOP

As new sTLDs prepare for introduction, it is important to revisit the examples set by prior TLD launch policies. In 2002, I published a series of articles and pages on UDRPlaw.net devoted to the Start-up Trademark Opposition Policy (STOP) for .biz. Since I am transitioning those pages over to the UDRPlaw blog, I thought I would take this opportunity to publish the original post with updated hyperlinks to recent research.

Readers interested in STOP should also review WIPO's recent article: New Generic Top-Level Domains: Intellectual Property Considerations

(From UDRPlaw.net/STOPresources.htm, last updated Dec. 31, 2002):

A total of 338 STOP cases were filed with WIPO, which issued 268 STOP decisions. WIPO Panelists granted transfer to the Complainant 107 times (counting one split decision), for a 39.9% success rate. A high number of cases involved common and generic words. One case was suspended, WIPO Case DBIZ2002-00197, involving the domain names Racebook.biz, Dogracing.biz and Pachinko.biz.

A complete list of STOP complaints filed in 2001 is available on the WIPO website. 53 STOP cases were filed with WIPO in 2001, and seventeen cases were terminated before a decision was issued.

The WIPO STOP cases were decided by at least 52 different panelists (this number is probably higher, given the large number of decisions issued in Asian languages):

Dennis A. Foster (14)
31 Korean language decisions, unable to determine panelist
François Dessemontet (10)
Tony Willoughby (11)
Edward C. Chiasson, Q.C. (10)
M. Scott Donahey (10)
Philip N. Argy (10)
Geert Glas (8)
Hon. Sir Ian Barker, Q.C. (8)
Alan L. Limbury (9)
Frederick M. Abbott (10)
Dr. Gerd F. Kunze (9)
D.J. Ryan (7)
A.H. Brown (6)
Christopher Tootal (6)
James Bridgeman (7)
Knud Wallberg (5)
David H. Bernstein (5)
Wolter Wefers Bettink (6)
Dr. Thomas Legler (6)
John Swinson (6)
Peter G. Nitter (6)
Stantiforth Ricketson (6)
Dr. Torsten Bettinger (6)
Mark V.B. Partridge (5)
Warwick Alexander Smith (5)
Dr. Clive N.A. Trotman (4)
Jonathan Hudis (3)
William R. Cornish (3)
Roderick M. Thompson (3)
Hugues G. Richard (3)
P-E Petter Rindforth (3)
4 Chinese language decisions, unable to determine panelist
Hariram Jayaram (2)
Andrea Mondini (2)
Henry Olsson (1)
Cecil O.D. Branson, Q.C. (1)
Jose Carlos Erdozain (1)
Clive Elliott (1)
Jordan S. Weinstein (1)
Roberto A. Bianchi (2)
David Perkins (1)
Bernard F. Meyer-Hauser (1)
Angelica Lodigiani (1)
Gunnar Karnell (1)
Jonas Gulliksson (1)
Marylee Jenkins (1)
Clive Duncan Thorne (1)
Michael Charles Pryles (1)
Nick Gardner (1)
Thomas H. Webster (1)
Boh Young Hwang (1)

Complete List of WIPO STOP Decisions

Complete List of NAF STOP Decisions

Over the same period, 343 STOP cases were filed with the National Arbitration Forum. The NAF issued 319 STOP decisions, and complainants prevailed 182 times (53.1% success rate).

The NAF STOP cases were decided by 56 different panelists:

Hon. Charles K. McCotter, Jr. (37)
Sandra Franklin (30 cases)
Hon. Ralph Yachnin (Ret.) (22)
James Alan Crary (18)
Tyrus R. Atkinson, Jr. (17)
Judge Harold Kalina (Ret.) (15)
Hon. Carolyn Marks Johnson (16)
James A. Carmody (13)
James P. Buchele (11)
John J. Upchurch (10)
Alan L. Limbury (9)
M. Kelly Tillery (9)
Judge Irving H. Perluss (Ret.) (10)
Anne M. Wallace, Q.C. (6)
Bruce E. Meyerson (6)
G. Gervaise Davis III (6)
Judge Richard B. Wickersham (6)
Hon. Paul A. Dorf (Ret.) (5)
Daniel B. Banks, Jr. (4)
Jacques A. Léger, Q.C. (4)
Judge Karl V. Fink (Ret.) (4)
R. Glen Ayers (3)
Robert T. Pfeuffer (3)
Peter L. Michaelson (4)
David A. Einhorn (3)
Estella S. Gold (3)
M. Scott Donahey (2)
Fernando Triana (2)
Hon. Roger P. Kerans (3)
David S. Safran (2)
Luz Helena Villamil-Jiménez (2)
Jaime Delgado (2)
Min S. Xu, Esq. (2)
P. Jay Hines (2)
Edward C. Chiasson, Q.C. (2)
Hughes G. Richard (2)
Clive Elliott (2)
David P. Miranda (2)
Louis E. Condon (2)
Rodney C. Kyle (2)
David E. Sorkin (1)
Robert R. Merhige, Jr. (Ret.) (1)
Jeffrey Samuels (1)
Moon Sung Lee (1)
Hon. H. Curtis Meanor (1)
Herman D. Michels (2)
Dennis A. Foster (1)
Tom Arnold (1)
Richard Hill (1)
Linda M. Byrne (1)
Houston Putnam Lowry (1)
Tom Arnold (1)
Hon. Charles A. Kuechenmeister (Ret.) (1)
Hon. Rudolph J. Gerber (1)
Robert A. Faschler (1)

The UDRP and Switzerland

Three recent .ch ccTLD decisions have been issued by WIPO:

Hitachi.ch (Transferred)
Pitu.ch (Transferred)
Backstage.ch (Complaint denied)

More on the MorganFreeman.com Decision

Here's a roundup of news articles discussing the MorganFreeman.com decision, starting with the CircleID article written by fellow Little Giant Evan Brown.

Freeman Is Master of His Domain (Name) - Zap2It, May 10
Oscar Winner Freeman Wins Rights to Cyberspace Name - Scotsman, May 10
Freeman Wins Cybersquatter Battle - BBC, May 10
Freeman Wins Rights to Name in Cyberspace - Miami Herald, May 10

Morgan Freeman Wins Name in UDRP Decision

Oscar-winning actor Morgan Freeman prevailed in his UDRP case against the registrant of MorganFreeman.com in a decision released this morning by WIPO. Morgan Freeman v. Mighty LLC, WIPO Case D2005-0263 (Apr. 28, 2005).

Freeman provided evidence that Mighty LLC owns over 400 domain names identical to the names of other celebrities and sports organizations. Further, "In this case the Panel finds it evidenced that the public associates the name 'Morgan Freeman' with the Complainant's movies and entertainment services. Moreover, albeit more relevant under the bad faith discussion below, Complainant's common law rights in the mark MORGAN FREEMAN existed long before the domain name at issue was registered."

Domain Name Business is Booming

An article from E-Commerce Times (available at http://www.ecommercetimes.com/story/Domain-Name-Business-Booming-in-Post-Dot-Com-Era-129003WWAIE9.xhtml) highlights the growth in domain name sales from '03 to '04. An important aspect of the current boom is the growing number of registrants who are trading in domain names in new (or recently opened) TLD extensions. Sales of .biz, .info, and .us domain names grew in '04, and look to continue to boom in '05.

For those interested in learning more about the booming domain name business, head to Seattle for the Domain Roundtable, May 25-27, 2005 (more info available here: http://www.domainroundtable.com/).

Friday Roundup

Larry Seltzer has an interested article titled ICANN Sticks Up For Trademark Owners. The article quotes Martin Schwimmer of the Trademark Blog.

Europe Annexes Caribbean Islands (TheRegister.co.uk) - May 6

Country Store, 'Squatter Settle (RutlandHerald.com) - May 5

Phishers Turn DNS Against Authorities (Techworld.com) - May 6

L.L. Bean Wins LLBean.org UDRP Decision (NAF Case FA449421) - May 5

Disney Celebrates 50th Anniversary with UDRP Victory in MagicKingdom.info case (NAF Case FA444432) - May 3

Recent UDRP Filings

Here is a selection of some of the recently commenced UDRP cases with WIPO and the National Arbitration Forum:

StevieWonder.com, recommenced May 4, 2005, NAF Case FA453986.
1800HomeDepot.com, commenced May 2, 2005, NAF Case FA467966.
SearsTower.net, commenced April 26, 2005, NAF Case FA465281.
Network Solutions LLC (7 different UDRP cases), WIPO Cases D2005-0450-0456.
ESPN v. ESPNNEWS.COM, WIPO Case D2005-0444.
HUN.COM, WIPO Case D2005-0406.

Registrar Earnings

Several registrars have released quarterly earnings reports over the past couple of days:

Tucows Reports Continued Strong Results for 1Q '05 (PR Newswire) - May 4

Register.com Reports Fourth Quarter and Full Year 2004 (BusinessWire.com) - May 4

Other registrar news:

Network Solutions Wins Best Customer Service Organization Award (PR Newswire) - May 4

Happy Cinco de Mayo: UDRP Edition

In honor of Cinco de Mayo, here is a selection of Mexico-related UDRP decisions:

Tequilas del Señor, S.A. de C.V. v. PubliSystem.net y Carmen Martínez, WIPO Case D2004-0630 (Oct. 19, 2004).

Consejo de Promoción Turística de México, S.A. de C.V. v. Latin America Telecom Inc., WIPO Case D2004-0242 (July 19, 2004).

Maya Tours v. Eastwind Group, NAF Case FA358059 (Dec. 27, 2004).

ICANN Board Meeting Today

Big conference call today for the ICANN Board. Key items on the agenda: .net redelegation discussion, the .asia sTLD application and the .xxx sTLD application.

Tuesday News Roundup:
Global Poker Game For the Internet Goes On (TheRegister.co.uk) - May 3

Etisalat deploys core Internet element to enhance Internet performance throughout region (AMEInfo.com) - May 3

Keeping Domain Disputes Out of Court (NZHerald.co.nz) - May 3

Alabanza Celebrates 10 Year Anniversary (WebHostDir.com) - May 3

GoDaddy's Ad Agency is Bounced (AZCentral.com) - May 3

Nominet Acts Over Firevision Debacle (TheRegister.co.uk) - May 3