Legal News

John Berryhill Wins Forces.com UDRP

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I don’t have any legal expertise, so I generally stick to writing about UDRP filings that appear be fairly obvious. When Salesforce filed a UDRP for Forces.com, it bothered me quite a bit because of the descriptive nature of the domain name. It was also the first UDRP filed against the domain owner, and it didn’t seem right to me.

I just read the NAF UDRP decision, and the complaint was correctly denied by the three panelists (Honorable Neil Anthony Brown QC, Honorable James A. Carmody (Ret.), and the Honorable Bruce E. Meyerson (Ret.)). Skilled domain attorney John Berryhill successfully defended the domain owner’s right to this descriptive domain name, although a reverse hijacking finding was not sought by the  respondent.

Unfortunately for the domain owner, his company now has a UDRP filing on its records, despite it being a victory in his company’s favor. In addition, UDRP defenses aren’t inexpensive, so the sunk legal costs just added to the cost of owning this domain name. It doesn’t seem very fair to me.

Here are some excerpts from the UDRP decision that I found most interesting, although you should read through the decision in its entirety, just so you can see how a panel decides a case like this:

The Panel finds it unnecessary to determine whether Complainant has rights in any of the claimed marks—SFORCE, FORCE.COM or FORCE—because the Panel finds that the domain name is neither identical nor confusingly similar to any of the marks. The word “forces” is not identical to any of the marks. The only real issue before the Panel is whether the word “forces” is confusingly similar to one or more of the marks.

In considering whether a domain name is confusingly similar to a mark in which a complainant has rights, the question becomes whether the  “alphanumeric string comprising the challenged domain name is identical to Complainant’s mark or sufficiently approximates it, visually or phonetically, so that the domain name is  ‘confusingly similar’  to the mark.”

Complainant is correct that in some cases the mere addition of a letter, or the creation of similar word, can create a domain name that is confusingly similar to a mark. An example of this is found in Ecolab USA Inc. v. Tomasz Kluz / Ekolab s.c. Tomasz I Aleksandra Kluz, FA 1386906 (June 3, 2011). In that case, the respondent substituted a “k” for the letter “c” in the mark thus changing “ECOLAB” to “Ekolab.” The panel in Ecolab USA Inc. observed that the domain name was confusingly similar to the complainant’s mark because it was phonetically similar.

In Spark Networks USA, LLC the respondent added the letter “r” to the complainant’s mark, CHRISTIANMINGLE, creating the domain name, . The Panel correctly found the domain name to be confusingly similar to the mark, holding that the “two words are, therefore, almost phonetically similar, as well as being visually similar, and they are especially similar conceptually.”

These cases are in contrast to the present case. First, the word “forces” has an apparent relationship to the military, thus having no evident connection to any business activity of the Complainant. Second, as to SFORCE and FORCE.COM there is no phonetic or visual similarity between the domain name and Complainant’s marks. Although the word “forces” is arguably visually similar to Complainant’s FORCE mark, the lack of distinctiveness to the mark, and the demonstrably different meaning of the words, results in a lack of any confusing similarity between the two.

 

Interesting UDRP for NdamukongSuh.com

One of the more frequent domain name related questions I am asked is regarding the ability to own the exact match domain name of famous athletes, celebrities, and other famous people. There are a lot of people who don’t think it’s a problem to own the exact match of someone’s domain name, and a perfect example is seeing how quickly the .com names of American Idol performers are registered after each initial performance.

I’ve always believed a person can own the exact match domain name of a famous person if they operate it in a way that doesn’t make money off that person’s fame. For instance, someone could hypothetically own DerekJeter.com and have a baseball fan site about New York Yankees superstar Derek Jeter as long as they aren’t monetizing it or trying to sell it. That’s not a legal opinion but just an observation of mine. As a domain investor, it doesn’t make sense to me to do this when you can’t profit from the domain name with the risk of losing it.

This morning, I read an interesting UDRP decision for the domain name  NdamukongSuh.com.  Ndamukong Suh is an NFL football player for the Detroit Lions, and ironically, he’s been in the news quite a bit this past week for an incident that took place in the Thanksgiving Day football game against the Green Bay Packers. He was suspended by the National Football League for two games as a result.

Here are some interesting quotes from the UDRP decision that ultimately went in favor of the complainant:

Respondent acquired the disputed domain name in January 2009, with knowledge that it incorporated Complainant’s name. After learning that Complainant had retained a web developer other than Respondent, Respondent offered to transfer the domain to Complainant’s web developer, stating “Maybe we can work something out that is fair for the name.” In subsequent communications, Respondent provided a list of memorabilia items signed by Complainant that he would accept for transferring the domain name. Alternatively, he offered to accept “a few” game tickets for transfer of the disputed domain name.”

Complainant contends that the disputed domain name incorporates his name in its entirety, that Respondent has no legitimate right or interests in the domain name and that Respondent’s practice of registering the domain names of athletes and then trading those domain names for certain memorabilia or game tickets supports a finding of bad faith registration and use of the disputed domain name.”

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Respondent does not dispute this. The disputed domain name resolves to a “domain parking program” website. Such domain parking in this case is not considered a legitimate use of the disputed domain name in connection with a  bona fide  offering of goods or services.”

However, the record indicates, by Respondent’s own admissions, that his primary purpose in registering the disputed domain name was to sell the disputed domain name to the Complainant for valuable consideration, in the form of memorabilia or game tickets, in excess of the documented out of pocket costs directly related to the disputed domain name. That the consideration he requested was in the form of signed memorabilia or game tickets does not avoid a bad faith finding. Respondent admits that he has a practice of registering popular athletes’ names and demanding memorabilia or game tickets in return for trading the domain name. There is no requirement in paragraph 4 of the Policy that the value demanded be above a certain threshold, only that it be in excess of the out of pocket costs directly related to the domain name.”

The next time you think it might be a good idea to register the domain name of a famous person with the hope of getting something in return (other than a “thank you,” it might be advisable to review this UDRP decision. I guess the good news for the domain registrant is that Suh and his attorneys filed a UDRP rather than a lawsuit in federal court for cybersquatting.

.XXX Sites Blocked in UAE, BUT…

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I had a conversation with a blog reader, and he mentioned that one of the primary .XXX informational websites set up by the ICM Registry, About.XXX, is being blocked by the United Arab Emirates government. I don’t know if all .XXX sites are blocked, but he indicated that they are.

According to the landing page that is seen when a visitor in the UAE types in About.XXX:

Access to this site is currently blocked. The site falls under the Prohibited Content Categories of the UAE’s Internet Access Management Policy.

This is something people speculated would happen en masse, and many thought this would be harmful to the .XXX extension and consequently, the domain owners who operate and invest in .XXX domain names. I, however, have a differing opinion.

I asked the person who sent the screenshot to do me a favor and visit a different domain name to see what exists on the site in the UAE. Not surprisingly, when he visited Playboy.COM, the same landing page was shown. The UAE blocks websites with adult content, whether they are on .XXX domain names or not.

If the UAE has blocked the entire .XXX extension via wildcard, I suppose it would be a problem for a company who owns and operates a non-adult website on a .XXX domain name. However, I can’t really imagine a non-adult website operating on a .XXX domain name. Also, it’s very likely any adult website would be blocked regardless of the extension due to the government’s regulations, so it’s not endemic to one particular domain extension.

UDRP Filed Against Forces.com

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Every once in a while when checking out recent UDRP filings, there’s a case that is bothersome to me. This morning, I saw a UDRP was filed at the National Arbitration Forum on November 23, 2011 for the seemingly generic and descriptive Forces.com domain name.

Forces.com is owned by Internet Venture Holdings, Inc., a company based in Arlington, Virginia. IVH has owned Forces.com for many years, since at least 2007 according to the Whois record.

According to an email I received from IVH this morning, Salesforce.com filed the UDRP. Salesforce.com operates Force.com, although I don’t see how a customer could land on Forces.com and be confused into thinking that it was related to Salesforce in any way.

At the present time, there are no PPC advertisements on the landing page. There is a message that states “This premium domain is now for sale.” Prior to this simple landing page, there was a Armed Forces military-themed website since at least 2009, according to the Screenshot history tool.

IVH owns a number of descriptive domain names like StainedGlass.com, Coast.com, AlternativeCreditCards.com, Turquoise.com, Pooch.com, and many others. This is the first UDRP filing against IVH, and I hope the company prevails.

Trump Organization Files 2 UDRPs for TrumpWine.com and TrumpWines.com

A little over a month ago, members of the Trump Organization and Trump family celebrated the grand opening of the Trump Vineyard Estates winery. The company had purchased the former Kluge Estates vineyard and winery for somewhere over $6 million in an April foreclosure sale.

The winery is being run by Donald Trump’s son, Eric F. Trump, and it is currently using TrumpWinery.com for its website. Because the winery will likely produce a Trump brand of wines, the Trump Organization has filed a UDRP for two domain names: TrumpWine.com and TrumpWines.com.

TrumpWine.com is owned by someone in New Jersey, and it was initially registered in 2007. TrumpWines.com is owned by someone in New York, and it was initially registered in December of 2005. The singular domain name currently resolves to a standard GoDaddy landing page, while the plural doesn’t resolve for me.

While it may seem cut and dry, it will be interesting to read the responses from the domain owners. One of the three major tenets of a UDRP is that the domain name was registered in bad faith. Since there wasn’t a Trump brand of wine (to my knowledge) when the names were registered, this may be difficult to prove. That said, the “Trump” brand is well known, so the panel could rule that respondents registered the domain names under the belief that the Trump Organization may wish to have a Trump wine brand.

These two UDRP cases will be interesting to follow.

Can You Trademark a Geographic Domain Name?

The Dolan Company, a publishing giant that owns the Minnesota Lawyer magazine, recently sent a cease and desist letter to Aaron Hall, a lawyer in Minnesota, directing him to stop using the  MinnesotaLawyer.com  website and domain name. MinnesotaLawyer.com is essentially a lawyer’s blog with free  legal guides, free  legal forms, and a free  ask a lawyer  section.

Dolan’s letter requested that Hall immediately cease and desist “use of ‘Minnesota Lawyer’ in connection with online and/or printed publications in the legal field,” and “refrain from publishing legal articles and information” on MinnesotaLawyer.com.

In response to Dolan, Hall claimed that his use of “Minnesota Lawyer” was merely descriptive of his location and profession. “Dolan does not that have a monopoly on the words ‘Minnesota lawyer,” stated Hall. “Every lawyer in Minnesota can lawfully use those terms in the title of their website or domain name.”

This is a National Problem
“This isn’t the first time that a geographic domain name has come under fire,” said Hall, an attorney experienced in  trademark  and  internet  law. Hall said that Dolan’s actions are merely part of a larger problem:

This is about the rights of small website owners. This situation exemplifies the threat to website owners across the United States. Often small website owners give up their website after being intimidated and threatened by large corporations. I have represented many small business owners in disputes over a website with a generic or descriptive name. Many small business owners don’t know what to do when they get a cease and desist letter, so unfortunately, they make a mistake like giving up the website or selling it for below market rates. The law is often unclear in this area, especially when it comes to new technologies like the Internet and domain names. If necessary, we are willing to take this issue to the Supreme Court. This case could set an important precedence for small website owners facing similar threats.

Trademarks Are Industry Specific

This showdown raises the question of whether you can trademark a geographic name like “Minnesota Lawyer.” Since Dolan has registered this trademark, the obvious answer is yes. But does that trademark prohibit those in another industry from using those common terms to describe themselves?

Dolan’s cease and desist letter claimed that the lawyer’s use of MinnesotaLawyer.com was infringing the magazine’s federally registered trademark in “Minnesota Lawyer.” However, the trademark is in the publications industry, not the legal services industry. Dolan claims that Hall’s use was also in the publishing industry. Dolan said that Hall’s legal blog infringed the publishing giant’s trademark because Hall was publishing legal articles on his blog under the name “Minnesota Lawyer.”

Hall defended, noting that his blog only publishes legal articles written by attorneys in his firm, does not accept any advertising, and does not compete with Dolan’s magazine. “As a Minnesota lawyer, I have a right to call my blog ‘Minnesota Lawyer,'” said Hall. Dolan took issue with the title of the site and the copyright notice in the footer:

While, in some cases, “Minnesota lawyer” can be used descriptively to indicate that a person is a lawyer from or practicing in Minnesota, your use of “Minnesota Lawyer” is not descriptive. Rather than using the phrase to indicate that you are a Minnesota lawyer, you are suggesting that you are the Minnesota lawyer. This is underscored by your prominent use of “Minnesota Lawyer” in the header of your website at “minnesotalawyer.com” and in the website’s copyright notice.

Hall responded, “titles are generally capitalized, which explains why “Minnesota Lawyer” is capitalized in the title.” Hall admitted that the footer was a problem for a few days:

This site has existed for over a year, and has always attributed copyright to me. However, in the past week or so, the site has been under re-development. Apparently, for a few days or less, the site temporarily had the default copyright notice embedded in the website software, which included the copyright notice and inserted the site’s title next to it. Immediately upon noticing this and before receiving your letter, I emailed the web designer to change this to indicate that the copyright is owned by me. This has been changed.

Likelihood of Confusion or Perceived Association

At the core of trademark infringement and trademark dilution is the question of whether people will mistake one company for another or believe that they are associated. Dolan summarized its concerns this way:

Your use of “Minnesota Lawyer” in this manner creates the false appearance of an association, affiliation or connection between you and your activities and Dolan, the Minnesota Lawyer trademark and Dolan’s goods and services. Dolan is concerned that such use is likely to cause confusion, cause mistake, and/or deceive consumers into believing that Dolan sponsors, endorses, supports or is otherwise affiliated with you and your activities.

What do you think? Should the Minnesota Lawyer magazine be able to prevent a Minnesota lawyer from using MinnesotaLawyer.com? Is it possible that some people will confuse the lawyer with the magazine by the lawyer’s use of MinnesotaLawyer.com? This case is interesting because, unlike many legal battles in the domain world, both sides in this case have plenty of legal firepower.

More information about this legal battle can be found here:  MinnesotaLawyer.com Cease and Desist Letter.

DISCLAIMER: This article was written with assistance from Aaron Hall. In addition to being an attorney writing on  PPC law,  blog law, and other web business topics, Aaron Hall is a domainer himself, owning  MinnesotaAttorney.com,  MinneapolisAttorneys.com,  MinnesotaBusinessAttorney.com,  MinneapolisPhotographer.com,  MinnesotaBankruptcyLawyer.com,MinnesotaBankruptcyAttorney.com, and over 400 other domains.

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