Legal News

Yesterday, FoxNews reported that QuinStreet has agreed to hand over GIBill.com and its website to the US Department of Veterans Affairs. Twenty US states were involved in the settlement, and QuinStreet would also have to pay $2.5 million to those states as part of the settlement.  QuinStreet is a publicly traded company on NASDAQ, trading under they symbol  QNST.

According to the FoxNews article, the settlement is related to this:

“The states alleged that QuinStreet violated consumer protection laws while operating websites that generate leads primarily for the for-profit education industry. The states said that several of the company’s sites, including GIBill.com, deceptively gave the appearance that the sites were operated, owned or endorsed by the U.S. government or military.

QuinStreet will relinquish ownership and control of GIBill.com to the veterans affairs department that will use the domain to promote the program and its available benefits.“

The Wall Street Journal also reported on this settlement, and the article noted that “QuinStreet says it doesn’t consider the website misleading, but reached the agreement to provide greater clarity.”

QuinStreet is a  publicly traded marketing and media company that operates websites on descriptive domain names in a number of verticals. You may recall that QuinStreet paid a reported $35.6 million for Insurance.com and a reported $16 million for Insure.com. The company also acquired CarInsurance.com, Internet.com, and several other websites for significant sums of money.

A couple of weeks ago, Washington Nationals rookie outfielder Bryce Harper was being interviewed by reporters in Toronto, and one of the local reporters asked him about drinking since he’s underaged in the US but can legal drink in Canada. As you can see in the video above, Harper answered, “that’s a clown question, bro,”

An Internet meme was born. People posted other humorous videos with famous questions and Harper’s response. Even Nevada Senator Harry Reid got in on the act, jokingly answering “that’s a clown question, bro” to a reporter’s question.

As you’d probably suspect, shortly after Harper’s reply made the news, people began registering matching domain names. ThatsAClownQuestionBro.com, .net, .org, .info, and .us were all registered by what appears to be different people hours after the press conference went viral.

Perhaps there will be a legal battle for these domain names (well, if anything, the .com) because it’s been reported that Harper filed for a trademark for the term, and Under Armour plans to sell shirts with the saying emblazoned on them.

I don’t know if it’s worth spending time and money to try and wrest the domain name(s) from the registrants, but Harper and his legal team seem intent on protecting the ballplayer’s phrase. It will be interesting to follow.

Do you think someone should have the rights to a domain name for a matching phrase they coined and are trademarking?

A UDRP was recently filed for Shocking.com, which clearly appears to be a descriptive domain name, and Brett Lewis of Lewis & Lin won the decision on behalf of the domain registrant. The company that filed the UDRP is   Interbasic Holding S.A, which also filed a UDRP for ZUT.com (and lost that one, too).

Brett Lewis and Zak Muscovitch of The Muscovitch Law Firm (who defended ZUT.com) asked for Reverse Domain Name Hijacking decisions, and the request was denied in both instances. For more on RDNH, see Nat Cohen’s post from yesterday.

Below are some of the findings from the Shocking.com UDRP. I will post a link to the UDRP decision once WIPO puts it online. Congratulations to Brett Lewis, Zak Muscovitch, and the domain registrants. ** Update ** UDRP is now available here.

“The Panel notes that in addition to the Disputed Domain Name, the Respondent (or its related companies) is also the registrant of at least five other domain names incorporating generic terms (i.e.,,,,and). Further, in the first two years after the Disputed Domain Name was registered, it was indeed used in connection with a purpose relating to its generic meaning (i.e. the site provided comparative prices on Internet services under the heading “Shocking Prices”). After the Website was updated in 1999, it offered ISP-related services and no longer used the heading “Shocking Prices” on the Website.”

“Although the use of a domain name in connection with its generic or descriptive meaning readily supports a finding of rights or legitimate interests, it has been held previously that registrants that register generic or descriptive domain names can have rights or legitimate interests in such domain names so long as they have been used in connection with a bona fide offering of goods and services before receiving notice of the complaint (see Allocation Network GmbH v. Steve Gregory, supra).”

“After navigating through the Website, the Panel finds that although Internet users are redirected to “www.chico.net” upon clicking on any links displayed at the Website, there is no evidence to suggest that the ISP-related services advertised at “www.chico.net” are anything other than a bona fide offering of services. In fact, according to the snapshots available on “www.archive.org”, the Disputed Domain Name used to host a website advertising ISP-related services as early as 1996 and appears to have been used to provide a bona fide offering of services ever since. “

“The Panel finds that the Respondent has rights in respect of the Disputed Domain Name as a result of its legitimate use of the Website in connection with ISP-related services.”

“The Panel notes that the Complainant has failed to provide sufficient evidence of the fame of the SHOCKING trade mark throughout the world and in particular in the US where the Respondent is located. “

“Although the Complainant contended that the SHOCKING trade mark was very well-known at the time that the Disputed Domain Name was registered, the Panel notes that no evidence has been adduced by the Complainant in support of such contentions. Absent such evidence, and in light of the Respondent’s assertion of good faith use as supported by a record of bona fide use of the Disputed Domain Name for a number of years, the Panel is unable to find that the fame of the SHOCKING mark was such that the Respondent (a US-based entity) was more likely than not aware, or had knowledge, of the Complainant’s mark at the time of registering the Disputed Domain Name. The Panel is therefore unable to find that the Respondent knew or should have known of the Complainant and its SHOCKING mark when acquiring and using the Disputed Domain Name.”

“The Panel is not convinced that the Respondent acquired the Disputed Domain name with the intent to profit from the Complainant’s trade mark. The Respondent’s business is so distinct from the business of the Complainant that Internet users or customers are unlikely to be confused as to whether the Respondent may be associated, affiliated or sponsored by the Complainant, which precludes the presumption that the Respondent acquired the Disputed Domain Name, expecting to profit from this confusion. “

I read a post on DNForum today, and it appears that Microsoft may have dropped two product domain names. According to DomainTools, there is currently “no match” in the Whois database for OfficeXP.com and Windows98.com is currently registered to “BackorderZone.com, LLC.”

Using the Whois history tool, I was able to see that Microsoft owned both domain names at one point in time. In 2011, Microsoft was the registrant of Windows98.com, and it was registered at Melbourne IT with an expiration date of March 2012. In 2011, Microsoft was the registrant of OfficeXP.com, which was also registered at Melbourne IT with an expiration date of March 2012.

According to the aforementioned DNForum thread, these domain names were reportedly available for backordering within the past few days. I am not sure what registrar caught the names and/or if they are currently pending auction at a platform like NameJet or SnapNames.

This is certainly a case where any buyer/bidder needs to proceed with caution (to say the least). Microsoft does appear to have live trademarks for both Office XP and Windows 98. The company has been known to  aggressively  protect its trademarks as well.

I don’t really understand why these names wouldn’t be renewed and forwarded to Microsoft’s home page.

This is a post written by contributor,  Paul Raynor Keating. Paul is an attorney specializing in domain names and related matters. He lives and works in Barcelona, Spain.

I was recently surprised to read the following WIPO notice received by a friend of mine the other day:

“Dear Complainant,
Further to our Acknowledgement of Receipt of Complaint, as required by Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) and Paragraph 5 of the WIPO Arbitration and Mediation Center (the Center) Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules), we have reviewed your Complaint to verify whether it satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules and Supplemental Rules.

In accordance with Rules, Paragraph 4(b), you are hereby notified of the following formal deficiency with your Complaint:

(1) The text below section (C) of the Complaint, with the emboldened heading “Bad Faith in the Domain Name Use”, does not appear to describe why the domain name should be considered as having been registered and being used in bad faith.

Please note that paragraph 4(a)(iii) of the Policy and paragraph 3(b)(ix)(3) of the Rules require a complainant to describe why the domain name(s) should be considered as having been registered and being used in bad faith.”  (Emphasis in original).

Procedural requirements as the form of a complaint are specified in the UDRP and Supplemental Rules and compliance with matters of form are appropriate. Thus, for example, checking to verify that the name of the respondent comports with the WHOIS is a procedural matter because of the notice requirements in the UDRP. Other examples of form verification are the presence of a mutual jurisdiction selection and the required “verification”.

It is entirely inappropriate, however, for an ADR provider to conduct a substantive review of the complaint to verify that the complainant has included sufficient argument and evidence to sustain its burden of proof. There is no requirement in the UDRP or any of the Supplemental Rules stating that a complainant must provide argument and evidence in order to file a UDRP complaint. They only describe the substantive content needed to prevail. ADR providers are supposed to be neutral.

Notices such as the above effectively give the complainant a second bite at the apple because they are being advised to review and correct substantive issues pertaining to their burden of proof. They turn the ADR provider into an editor working for the benefit of the complainant. The proper course would be to refrain from any such apparent impropriety and let the panelist deal with the matter – the consequences of which must be reserved to the parties.

I question the propriety of the above notice for the simple reason that it evidences a substantive review of the complaint on the part of WIPO to correct a “deficiency” which would otherwise have led to a denial of the complaint.

Perhaps I shouldn’t be surprised. But I am continually disappointed at the ever expanding ways in which ADR providers assist complainants in the UDRP process. I have long objected to the constant stream of “reminders” sent to complainants about deadlines and the like, particularly those from NAF reminding complainants to correct complaints that have been rejected for filing. I have never once seen a “reminder” forwarded to a respondent. ADR providers must avoid the appearance of impropriety so as to protect the overall system from criticism and legal attack. ADR providers are supposed to be neutral. Matters of proof are the exclusive realm of panelists and WIPO is crossing the line.

The “deficiency” process is further marred by the way respondents are treated in the process. The domain is locked the minute the ADR provider receives a filing. The lock remains in place during the 5-day correction period. However, respondent is not permitted to see a copy of the complaint that had been submitted with the argument being that the UDRP has not “commenced”. My response is that the domain should then remain unlocked until the complaint is accepted for filing. The fact that the ADR provider maintains the lock and refuses to provide respondent with a copy of the “defective” complaint is merely an exercise to limit any possible advance notice to the respondent.