Beer Container Keeper-Colder TM Dispute Spills Over Into Federal Court

An Indianapolis company claims trademark rights in the generic term "koozie", which in the Midwest and other areas of the U.S. means "foam beverage sleeve intended to keep cans cold." The company, Norwood Promotional Products, threatended suit against North Carolina home-based Internet business Kustom Koozies over its use of "koozie" in its tradename and on its products. Kustom Koozies filed a declaratory judgment action in the U.S. District Court for the Eastern District of North Carolina. Norwood also filed an action against Kustom Koozies in the U.S. District Court for the Southern District of Indiana.

According to the article in today's Indianapolis Star, Judge Terrence Boyle "must consider whether the word koozie is now a generic term or is inextricably associated with a brand name, as in Xerox and Band-Aid."

While Norwood owns a U.S. Trademark Registration for "Koozie Kup", it has been unable to claim exclusive rights over the word "koozie" with the USPTO. Norwood does not own the domain names Koozie.com/.net/.org either.

In a decision issued yesterday by Judge McKinney in the U.S. District Court for the Southern District of Indiana, Kustom Koozie's motion to dismiss or transfer venue was denied. Norwood Operating Company v. KustomKoozies LLC, 05-CV-00229 (S.D. Ind. June 29, 2005).

So, as you enjoy a frosty (or other refreshing canned) beverage over the Fourth of July Weekend, take a moment to ponder the trademark battle over the "koozie" in your hand keeping your beverage of choice cold.

A Comment on CPR, and Mos Def Wins MosDef.com Decision

The CPR Institute For Dispute Resolution is one of four ICANN-approved domain name dispute resolution providers. CPR has been handling UDRP cases since its approval on May 22, 2000, although its UDRP services are employed less frequently than the other domain name dispute resolution providers, WIPO, National Arbtriation Forum and Asian Domain Name Dispute Resolution Centre. For several years, information on CPR's UDRP services was available at http://www.cpradr.org/ICANN_Menu.htm, but when a new CPR website was launched last year, the ICANN arbitration section was moved to another location within the website.

Now, when you've finished with this post, visit the CPR website. Look on the front page - no reference to domain name disputes. Look on the site map - no reference to domain name disputes. Unless you type "domain names" in the search box, and click the first entry, http://www.cpradr.org/ICANN_Menu.asp?M=1.6.5, you won't easily find information about CPR's domain name dispute resolution services.

CPR should fix this, in case anyone is interested in using them as an alternative to one of the other providers. CPR could also post its decisions in html (there's nothing wrong with pdf, but...), to make it easier to reference decisions.

Of note, back in February, rapper and actor Mos Def received a favorable decision in his case against the registrant of MosDef.com. Dante Smith (p/k/a Mos Def) v. MosDef, CPR Case 0502-050224 (Feb. 24, 2005) (decision in pdf). Perhaps this was publicized somewhere else, but I don't remember running across this decision.

Stevie Wonder Wins UDRP Case

Internationally famous award winning artist Stevie Wonder (real name Steveland Morris) was granted transfer of the domain name StevieWonder.com in a decision issued by the National Arbitration Forum. Stevland Morris a/k/a Stevie Wonder v. Unofficial Fan Club c/o Web Master, NAF Case FA453986 (June 22, 2005).

Timely additional submissions were filed by both sides. The registrant used the domain name as an unofficial fan club website with information on Stevie Wonder.

Panelist David Tatham issued a lengthy decision in the case with an interesting view of fan club websites. Ultimately, Tatham determines that the respondent did not use the domain name as a "fan site", stating "The Panel concludes that although the disputed domain name may be non-commercial, it has never acted as a fan site and it therefore fails the second of the requirements for legitimacy set by the WIPO Overview. The inevitable conclusion must be that Respondent does not have any rights or legitimate interest in it and that paragraph 4(a)(ii) of the Policy has been proved."

Melbourne Wins Commonwealth Games Domain

The host city corporation for the 2006 Commonwealth Games prevailed in its UDRP case against the Australian registrant of the domain names Melbourne2006.com, Melbourne-2006.com, Melbourne2006.info, Melb2006.com and Melb2006.info in a WIPO decision released this morning. The registrant had offered to lease the domain names to the State of Victoria, Australia for 49,000 AUD during the 14 months surrounding the Commonwealth Games Melbourne 2006 Commonwealth Games Corporation v. B & M Group of Companies Pty Ltd, WIPO Case D2005-0366 (June 16, 2005).

The decision is in line with other cases involving City and Year Date trademarks, including cases brought on behalf of the International Olympic Committee, its National Olympic Committees and host city organizations.

On Wednesday, July 6, the IOC will announce the host city for the 2012 Olympic Games.

News Roundup

ICANN's Future Is Not In Danger (Domaines.info) - June 27

First .EU Accredited Registrars (via Nom de Domaine) - June 28

NBA Picks Got Game But Not Web Name (Herald-Sun.com) - June 28

Cybersquatting Hits Businesses For Top Dollar (SPTimes.RU) - June 28

WhenU Wins Landmark Internet Decision (Press Release) - June 28

Volvo Loses WIPO Decision Involving Auto Parts Reseller Website

The holding company of Volvo's family of trademarks suffered a defeat in a WIPO decision released yesterday involving the domain name volvo-auto-body-parts-online.com. WIPO Panelist Torsten Bettinger determined that the registrant, who failed to submit a response to the complaint, had rights and legitimate interests in the domain name as part of its aftermarket auto parts business. The case is cited as Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case D2005-0447 (June 8, 2005).

This case bears watching to see if Volvo challenges the result in federal court.

In a UDRP complaint filed during the same time period, Volvo won its case against Korean registrant SooKwan Park over the domain name MyVolvo.com. See Volvo Trademark Holding AB v. SooKwan Park, WIPO Case D2005-0448 (June 10, 2005).

Thursday Roundup

A busy week frequently translates into light blogging. Here is a roundup of domain name and ICANN-related articles and UDRP decisions:

ICANN's New gTLD Strategy (ICANN)

Martin Schwimmer's comments on ICM Registry and .XXX (Trademark.blog.us) - June 23

Our Man In ICANN (Malaysia Star) - June 23

eNom, Inc. Announces It Will Be The Largest Domain Name Registrar To Offer The New .JOBS (Yahoo Press Release) - June 23

.JOBS Picks Momentum With Registrars (Webhosting.info) - June 23

Register.com Rejects RCM Bid (Forbes) - June 20

Shoemart.com UDRP Complaint Denied (NAF Case FA462916).

Radio Station Turned Off in UDRP Complaint (NAF Case FA473842). According to the Panel, "The granting of a distinctive call sign by the Federal Communications Commission is not a substitute for the granting of a registered trademark by the U.S. Patent and Trademark Office. Given the size and population of the United States, there must be many thousands of radio stations with many permutations of letters in their various call signs."

Mega Monday Roundup

It's been a long weekend, here is a roundup of domain name related news and articles:

ICANN Luxembourg Agenda

.Jobs Launches Start-Up Phase (Press Release) - June 19

.Jobs Website - EmployMedia.com
The Start-up Trade Name period for .jobs is currently running through August 19, 2005. If you are interested in registering a name, visit the EmployMedia website.

.Jobs Reserve List Policy:
"Our Reserve List Policy includes the following product categories. Domains in these categories are either registry-reserve or otherwise reserved from registration:
1. Occupational and industry (e.g., nursing.jobs, accounting.jobs, retail.jobs)
2. Geographic (e.g., cityname.jobs, regionname.jobs, zipcode.jobs)
3. ICANN-reserved (e.g., country.jobs, ICANN.jobs, iana.jobs)
4. Other generics (e.g., recruit.jobs, blow.jobs)

Names reserved into any of the above categories are not available for registration in the companyname.jobs category."

Registrations of .Jobs Domains Kick-Off (Webhosting.info) - June 20

Hope For Human Resources With .Jobs Domain (Circle ID) - June 20

Germans Coin Longest Domain Name In The World (Expatica) - June 20

Domain Name Debate Gets Underway (ComputerWeekly.com) - June 20

Domain Name Body Going Ahead (NZ Herald) - June 20

Nominet In Legal Tussle Over iTunes Domain (ABCMoney.co.uk) - June 18

Brits Turning Into Internet Sleuths (NetImperative) - June 20

Days Of Tax-Free Web Shopping May Be Over (CNET) - June 19

An Unavoidable Tax (Washington Post) - June 20

Checkmate in UDRP - Kasparov Wins Domain Name

International chess champion Garry Kasparov prevailed in his UDRP face-off against registrant Mark Andreev over the registration and use of the domain name Kasparov.org. The decision was released by the National Arbitration Forum today. Garry Kasparov v. Mark Andreev, NAF Case FA471047 (June 16, 2005).

Kasparov successfully argued that his last name was protected as a trademark with the USPTO. The Panel also determined that the use of the domain name to direct visitors to third party websites and for click-through traffic constituted registration and use in bad faith.

American Arbitration Association .US Decisions

Wow, who knew the American Arbitration Association had handled any .us cases? I happened to be reviewing the Neustar.us website and stumbled on two recent .us decisions published by the AAA. Here's what I found:

1. Federal Republic of Germany v. Gary Lauck; RJG Engineering Inc., AAA Case 494130000105 (May 3, 2005) (pdf)

The Panel ordered transfer of the domain names BundesrepublikDeutschland.us and FederalRepublicofGermany.us to the German Government. Germany also paid a $2,000 fee for going through AAA (compared to $1,300 for a complaint filed with the National Arbitration Forum). The Panel's decision is sparse, and it is difficult to tell whether the Panel reviewed other prior .us decisions before deciding in favor of the German Government. I don't question the outcome, just the length of the decision and lack of analysis found in other domain name decisions.

2. Ringling Bros. Barnum & Bailey Combined Shows, Inc. v. Kenneth Lima, AAA Case 4941300000205 (May 13, 2005) (pdf)

This case involved the domain name ringling.us. The Panelist, Peter Michaelson, is very familiar with .us and UDRP cases from his service as a panelist for the NAF and WIPO, and his decision reflected his experience with domain name disputes. Michaelson cited to a number of WIPO and NAF decisions and provided substantial reasoning for his decision. He granted transfer of the domain name to Ringling Bros.

The other interesting nugget in this case is that Ringling Bros. asked for reimbursement of its usDRP filing fees from the Respondent. I've never seen that before, and the provision is not in the usDRP or supplemental rules.

It would be helpful to know whether there were any pending .us cases with AAA. Unfortunately, the website is difficult to navigate. If a case list is there, I do not see one. Until AAA handles (or publishes) more .us decisions, it is tough to compare AAA with NAF.

American Red Cross Wins Typosquatting Case

The American Red Cross prevailed in its case against an Argentine typosquatter in a UDRP decision involving the domain name wwwRedCross.org. The American National Red Cross v. Juan Carlos Linardi, NAF Case FA472006 (June 13, 2005).

Panelist Hon. Charles K. McCotter Jr. determined that the domain name was identical and confusingly similar to the statutorily protected RED CROSS mark, that the registrant had no rights or legitimate interests in the domain name and that he registered the domain name in bad faith. The RED CROSS mark is protected under 18 USC §706 and §917.

According to McCotter, "Respondent intentionally registered a domain name that incorporates Complainant’s RED CROSS mark for Respondent’s commercial gain. Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent intentionally attempted to attract potential Internet users searching for Complainant to Respondent’s website by taking advantage of Internet users searching under Complainant’s RED CROSS mark and diverting them to Respondent’s commercial website."

This is another decision in a long line of UDRP cases decided in favor of the American Red Cross.

Registrant Keeps Elephant.com Domain in WIPO Decision

This morning WIPO released a three-member panel decision in favor of the registrant of Elephant.com, denying the UDRP complaint brought by Admiral Insurance Services. Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case D2005-0241 (June 4, 2005).

The Panel agreed that the registrant had rights and legitimate interests in the domain name, finding "The Panel considers that the use of a generic domain name to provide information about the genus satisfies the requirements of paragraph 4(c)(i) of the Policy. It is unnecessary to decide whether this is so irrespective of whether a respondent knows of a complainant’s mark prior to acquiring the domain name because here the Panel has found the Respondent had no such knowledge."

Personally I do not think the Panel weighed the genericness of the word "elephant" strongly enough in this case, and I am surprised the Panel did not touch on a possible reverse domain name hijacking claim in this case. In any event, the registrant retains control of the domain name, and the Complainant is free to use its "ELEPHANT" mark on the Internet in other TLDs.

Friday Roundup

Motel Owner Bites Back as Sandwich War Intensifies (TimesOnline.co.uk) - June 10
Neustar IPO Set At 25 Million Shares, $18-20/Share (TwinCities.com) - June 10
VeriSign To Manage .Net Registry 6 More Years (Reuters) - June 10
Register.com Returns To Compliance With NASDAQ Listing (BusinessWire) - June 8
Venture Capital Rediscovers The Consumer Internet (New York Times, subscription required) - June 10
Utah Sued Over Internet Porn Law (Daily Herald) - June 10

Respondent Keeps TrivialPursuits.net in WIPO Decision

The trademark owner of the well-known TRIVIAL PURSUIT game suffered a defeat in its case against the registrant of TrivialPursuits.net, in a WIPO decision released this morning. Horn Abbot International Limited v. Ian McMillan, WIPO Case D2005-0198 (May 25, 2005).

The respondent claimed he registered the domain name to write about "trivial pursuits".

Panelist Warwick Smith agreed, stating "The onus of proving bad faith remains on the Complainant, and at the end of the day the Panel is not brought to the point of being unable to conceive of any plausible use of the domain name by the Respondent which would not be illegitimate. Some people who use the Internet do appear to be interested in writing and reading about unimportant and apparently pointless recreational and other human activities or pursuits which the Panel thinks can fairly be described as “trivial”, and if it was the Respondent’s intention to eventually launch a website dealing with such “trivial pursuits” the Panel is not persuaded that any such use would necessarily involve infringement of the Complainant’s trademarks, or any other illegality. He says that was his intention, and in an administrative proceeding such as this, the Panel is not in a position to dismiss that statement as being clearly false, in particular when taking into account the descriptive character of the disputed domain name."

VeriSign Keeps .Net

It's official. ICANN has announced that VeriSign will retain control of the .net registry for an additional six years. The decision was made at Tuesday's ICANN Board Call. According to the press release, "[i]n taking this action ICANN’s Board considered the entire RFP Process, an independent evaluator’s report, Internet community comments and the terms of the new agreement."

American Eagle Outfitters Loses UDRP Case

In a decision released June 3, American Eagle Outfitters has lost a UDRP case against the registrant of the domain name AmericanEagleStores.com. American Eagle Outfitters, Inc. and Retail Royalty Company v. Covanta Corporation, NAF Case FA465210 (June 3, 2005).

Panelist Charles K. McCotter Jr. determined that American Eagle Outfitters "failed to establish that the words 'American Eagle,' apart from the registered mark as a whole, have acquired a secondary meaning such that the relevant public exclusively associates the words with Complainant as a source of services. Id. Nor has Complainant established secondary meaning in the phrase 'American Eagle Stores'."

So far Respondent Covanta Corporation's website is not available on the Internet. This case may not be over, as American Eagle Outfitters may challenge the decision in federal court.

ICANN Board Call Today

The second ICANN Board call of June 2005 is scheduled for today. On the agenda:
- Approval of Minutes
- Proposed .Net Registry Agreement
- Proposed .Mobi Registry Agreement (please fix the errors in the Appendices)
- Strategic Plan

The next Board Meeting is set for July 11-15 in Luxembourg.

.MOBI Contract Completed

Late yesterday ICANN published the proposed contract for the .MOBI sTLD. See: http://www.icann.org/tlds/agreements/mobi/mobi-registry-agreement-03jun05.pdf

Interesting nuggets include:
1. Sunrise period for trademark owners with trademark validation process (the WIPO recommendation for new gTLDs)
2. After Sunrise, .MOBI will be first come, first served with the UDRP available for domain name disputes.
3. Premium names will be sold at registry auction (such as travel.mobi, auto.mobi, sex.mobi, etc)
4. Major worldwide city names (and probably country names as well) will be registry reserved
5. mobiGuard restricted level Whois option proposed
Much more available at http://www.icann.org/announcements/announcement-03jun05.htm

The Agreement will be submitted to the Board for approval. The next Board meeting is set for Tuesday, June 7.

Supersized Friday Roundup

This has been a big week for Internet news. On Wednesday, the ICANN Board approved the application for a .xxx sponsored Top-Level Domain. WIPO released its recommendation for uniform intellectual property protection in new gTLDs. Since then, there have been hundreds of articles on ICANN and .xxx. A selection of news coverage and blog entries is available below:

Some Notes on the .XXX Top-Level Domain (Circle ID) - June 2
.xxx Approval A Positive Sign (ICANNWatch) - June 3, see the quote: "Yes, you heard it here first, Mueller praises ICANN!"
.XXX Domain Approved (Washington Post) - June 3

In other sTLD news, Tralliance President Ron Andruff has an update on .travel on Hospitalitynet.org:
May 2005 ".travel" Update

According to the article, .travel is prepping for limited launch (Sept.-Nov. 2005). Countries will also be given priority to register "country names (in English and in their respective national languages), cities, town, and place names (i.e., important geographies, heritage sites, sacred places, distinct economies, states, provinces, islands, cities, etc.) The priority right will last approximately nine months and will give each country the ability to register their specific names accordingly."

Other news articles:

A Battle For The Soul Of The Internet (ZDNet) - June 3
Geographic Web Domains Anger WA Tourism Body (ABC.net.au) - June 3
Falwell or Fallwell? (Augusta Free Press) - June 1
Suburban Sprawl Moves Into Cyberspace (Sydney Morning Herald) - June 1

New UDRP Decisions:

American Heart Association Wins Domain (NAF Case FA463122) - May 31
Disney Wins PiratesoftheCaribbean2.com Case (NAF Case FA464445) - May 31
Complainant Loses AHAVA.COM Case (NAF Case FA464505) - May 31

WIPO Weighs In on IP Protection in New gTLDs

Lost in the shuffle of yesterday's ICANN announcement is this report from WIPO on the need for uniform mechanisms to regulate domain name registration in new gTLDs.

According to the WIPO recommendation: "Experience shows that the need for IP protection mechanisms is most tangible in open gTLDs, which are not subject to clearly defined and policed registration restrictions, and which accept domain name applications from the general public. The fewer restrictions and prior verification requirements associated with the registration process, the greater the risk of abusive registrations."

WIPO is calling for a "single uniform preventive IP protection mechanism across all new gTLDs. Specifically, new gTLDs would be required to offer IP owners the option of registering their protected identifiers during a specified period before opening registration to the general public." In short, WIPO recommends new gTLDs employ a Sunrise mechanism prior to the launch of a gTLD. This procedure may work well for some TLDs, but registry operators should be given the flexibility to decide for themselves whether they wish to employ an alternative procedure that will provide similar opportunties to IP owners without using a Sunrise process.

ICANN Approves .XXX Application

Yesterday ICANN approved the addition of the sTLD .XXX. ICANN will now enter into commercial and technical negotiations with ICM Registry to operate the voluntary .XXX sTLD. ICM's Press Release is available here.

".XXX will be a sponsored TLD specifically for adult oriented websites willing to adhere to a set of industry best practices. Among other things, creation of a top level domain for adult websites will help protect children from exposure to online pornography and also have a positive impact on online adult entertainment through voluntary efforts of the industry."

The International Foundation For Online Responsibility (IFFOR) will serve as the sponsor and policy-making authority for .XXX.

Article roundup on .xxx:

Stage Set For .XXX Internet Address (CNN) - June 2

ICANN Turns Its Attention To .XXX Adult Domains (PCPRO.CO.UK) - June 2

.XXX TLD Near Reality (AVN Online) - June 1