Cybersquatting

Rihanna.com Offered for Sale on DNForum; UDRP Filed Months Later

RihannaThe domain name Rihanna.com was offered for sale on DNForum back in June of 2009.   According to the updated thread, the domain name was later sold for an undisclosed amount of money. As you are probably aware, Rihanna happens to be the name of a popular musician, whose full name is Robyn Rihanna Fenty.

While looking through recent UDRP filings at the National Arbitration Forum, I noticed that there was a UDRP filed for Rihanna.com. At the moment, there is a Network Solutions coming soon page on Rihanna.com, and there’s nothing on the landing page that mentions the musician, who currently holds the #11 spot on the Billboard 100.

The moral of this post is that if you have a domain name that could potentially be seen as infringing on another company’s trademark (which can happen even with the most generic of names), you need to be cautious where you list it for sale and what you say when you list it. Assuming it was the singer’s legal team that filed the UDRP, I am sure this line didn’t help the owner, “Rihanna.com Correct Spelling!”

Soon enough will will know if the complainant saw the sale on DNForum, elsewhere, or if they targeted it without having seen whether or not it was for sale, but it’s something to keep in mind when you are selling a domain name.

There have been other cases where the complainant cited a for sale listing on a domain forum as part of its complaint. Some of these cases include RymanAuditorium.com, EliteModels.com, WWF.com, and AirDeccan.com

Photo credit:http://www.flickr.com/photos/burningkarma/ / CC BY 2.0

Razorbacks.com: Legitimate Use of a Trademark Term

I pay very close attention to UDRP filings on generic domain names. I receive a daily email with UDRP decisions and frequently visit the NAF and WIPO websites to see what UDRPs have been filed. Oftentimes, the complainant feels the domain owner is infringing upon its trademark rights by displaying advertising of related products or services, as was the case with Dolphins.com.

However, there are plenty of UDRP filings that are overreaching, and I am happy to see the panelist(s) deny the complainants attempts. Today, I received the WIPO UDRP decision for Razorbacks.com, filed by Board of Trustees of the University of Arkansas of Little Rock, Arkansas, whose sports teams are known as the Razorbacks.

The owner of the domain name first registered the name in 1995, and the University contacted him about it several years later, in 2003. In the response, the University claims it sent the owner a cease and desist letter and also claimed that the domain owner owns the .com domain names of several college sports team brands, including Aggies.com (Texas A&M), Badgers.com (University of Wisconsin), Wolverines.com (University of Michigan), and Terrapins.com (University of Maryland).The domain names are and were used for vanity email addresses.

The three member panel found that the domain name was identical or confusingly similar to the complainant’s trademark, which is pretty clear. When the panel looked at the issue of Rights or Legitimate Interests in the domain name, they referred to other UDRP cases where vanity email addresses were considered a legitimate offering of goods/services. In addition, the panel cited the “multiple alternative uses of the term “razorbacks,” and they concluded that the could not side with the complainant on this matter. As a result, the complaint was denied.

Owners of similar generic domain names should note that the panelists did not say that the use of vanity email addresses on a domain name is reason enough to deny a complaint. In addition, the panelists made it clear that this could be a case for a court to ultimately decide, stating “Whether Complainant would have more success in a court of law, where evidence may be fully developed and examined through the use of discovery, interrogatories and other forensic processes and where standards other than those of the Policy may be applied, is not for this Panel to say.”

Whether University of Arkansas decides to pursue this through the court system is something we may learn about in the future, but for now, it’s good to see a panel deciding a case on its merits and not making assumptions about a domain owner’s intent.

(Razorbacks image courtesy of Wikipedia)

Owner of NewYorkNewYork.com Sued

The   owner of the domain name NewYorkNewYork.com has been sued by New York-New York Hotel & Casino, LLC for trademark infringement, cybersquatting, unfair competition, trademark dilution, and other related complaints. The lawsuit, which can be downloaded from the Las Vegas Sun website (pdf download), was filed in the state of Nevada on November 6, 2009.

In the lawsuit, the plaintiffs have alleged that,

“Recently, Plaintiff learned that the Infringing Domain Name has been linked to a website that prominently features the NEW YORK NEW YORK LAS VEGAS HOTEL & CASINO trademark (the “Infringing Website”). Specifically, the NEW YORKNEW YORK LAS VEGAS HOTEL & CASINO mark appears in the banner of the Infringing Website, next to a graphic of Plaintiff’s New York- New York Hotel. The Infringing Website does not include a disclaimer explaining that it has no affiliation with Plaintiff. When Internet users click on the banner, they are redirected to a website enabling them to book hotel reservations at Plaintiff’s New York-New York Hotel.”

In looking at the current website which contains various New York City related banners, it appears to me that they are using Ian.com as a booking engine for the site. Ian.com is the Expedia travel affiliate program, and they work with hotels throughout the world to book reservations. When a visitor uses the booking engine, they are able to search for cars, flights, and hotels throughout the world, including Las Vegas, where the New York-New York Hotel & Casino is located, all the while staying on the NewYorkNewYork.com website.

It’s unfortunate for the defendant, as I am not sure of how much control he would have over the results served by the booking engine. Further, it would seem advantageous for the hotel to be listed, but I imagine they would rather control the domain name if possible. From the looks of it, I don’t see how the owner of the domain name is at fault, although I am not an attorney nor do I have a legal background.

One complication for the current owner is that the lawsuit indicates the Hotel contacted a previous owner expressing concern over something similar that was done in the past. According to a screenshot on Archive.org from February of 2006, there were links to the New York-New York Hotel & Casino on the home page of the website. However, it doesn’t appear that the current owner is doing anything in bad faith. In fact, New York City is the default search when a visitor lands on the site.

I think this will be an interesting case to watch, since there are quite a few geodomain owners who use booking engines like Ian.com and WC Travel for their hotel results, and there are probably plenty of domain names that could potentially be infringing on certain marks.

Don’t Mess with Verizon, Motorola, and Lucasfilm

Just about every time a big company announces the launch of a new product, people buy related domain names for a multitude of reasons. Some buy them with the hopes of selling them to another company, others want to capitalize on potential popular typos, and yet others want to offer services, forums, special offers or other information related to the product.

On November 8th, Verizon Wireless began selling the Motorola Droid, a new smartphone that has had a whole lot of positive press and reviews. I’ve seen dozens of commercials for the Droid (if not more than dozens), and they seem to be directly taking on the iPhone and other smart phones. Needless to say, the Droid will be in high demand, and people will think they can make money by buying and selling Droid domain names.

However, with this particular trademark, you really need to be very careful of the usage of related domain names. On the bottom of Droid-related pages on Verizon Wireless’ website, there is a legal notice, “DROID is a trademark of Lucasfilm Ltd. and its related companies.”

By registering domain names with the term “droid” in it, you will probably be stepping on the feet of Verizon, Motorola, and Lucasfilm. Keep this in mind in the event that you think you might be able to make money with this mark. Obviously there are way to use “droid” in a domain name without potential liability, but I am sure there are plenty of people who don’t realize the risk of owning these with the intent of profiting off of the Droid mark, by selling, parking, or otherwise monetizing phone-related Droid names.

Don’t Buy Brandable Trademark Domains!

A few days ago, I received an email from someone who is new to the domain industry who asked me for my opinion on some of his 200 domain names. He started out buying domain names in the past year, and probably has spent in the ballpark of $2,000 on his domain investments. I won’t reveal any more details about the person or his names because the details don’t really matter, but most of his names were call to action domain names involving trademarks.

In the email to me, this person mentioned Rick Schwartz’s sale of iReport.com to CNN as a reason that he registered some of the names. I replied to this person with my advice, and I think it could be beneficial to others who have similar names or have considered purchasing similar names.

“The reason Rick sold iReport.com to CNN for so much was that they had already created the brand on their site, and they needed the domain name to expand.   Rick didn’t buy ireport.com to sell it to them, or else they probably would have sued him rather than try to buy it.

As someone who worked at an ad agency for a couple of years, I can tell you that creative directors love coming up with their own ideas, and they would probably not use a slogan that someone else created.   [XYZ Company] probably has an ad agency of record and doesn’t do their own campaigns (although they approve them).

I personally stay away from all trademark related names, because they can be much more trouble than they’re worth. Some people justify buying those that make money with parking pages by making a business decision (revenue outweighs risk). That’s not my game, and I highly doubt any company will pay for a name using their TM if it doesn’t mean anything to them.

In my opinion, newly registered domain names that contain the name of a popular or well known brand are not of value and can be very risky and have little to no reward whatsoever. Many companies protect their brand names fiercely, and it’s not very likely that a company will buy worthless domain names from a cybersquatter.

While lawsuits involving trademark domain names are more rare than UDRP filings, I would say the likelihood of selling a blatant trademark name that you just registered is probably just as likely as a lawsuit.

NBA Basketball Player Seeks to Return Hundreds of Domain Names

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As I reported back in May, NBA basketball player Chris Bosh won a judgment against a cybersquatter with the help of law firm Winston and Strawn. At the time, it was reported that Bosh was able to recover the domain name ChrisBosh.com, and he also won a financial judgment of $120,000 (including legal fees and damages). The report also indicated that the cybersquatter owned hundreds of other domain names of professional athletes.

This afternoon, Winston & Strawn announced that Bosh was awarded nearly 800 of these cybersquatted domain names, and Bosh now offers their return for free to cybersquatting victims.” Athletes who want to claim the rights to their .com domain names may now do so at no cost to them. According to a note to athletes on the downloadable pdf containing the domain names, “If your name is on this list and you would like your name returned for free, contact Hadi   Teherany at Max Deal at (917) 338-7946 or Hadi@MaxDealTechnologies.com.”

Some of the domain names that were awarded include:

  • DannyFortson.com
  • NickCollison.com
  • SteveNash.com
  • RaefLafrentz.com
  • JJRedick.com
  • JamalCrawford.com
  • TrevorAriza.com
  • RodneyStuckey.com
  • CarmeloAnthony.com
  • KendrickPerkins.com

Congratulations to Winston & Strawn for securing the 800 domain names and to Chris Bosh for being willing to return them to the parties that should have the right to own them. Now if he would just forward ChrisBosh.com to his website, Chris-Bosh.com!

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