Bill Clinton Loses UDRP Cybersquatting Arbitration - Inconsistency Still a Big Problem With UDRP Decisions

As being reported at HuffintonPost.com and Domain Name Wire, President Bill Clinton lost his Uniform Domain Dispute Resolution Policy (UDRP) NAF arbitration for the domains <williamclinton.com>, <williamjclinton.com> and <presidentbillclinton.com>, registered with The Name It Corporation d/b/a Nameservices.net.  Essentially, the arbitrator/panelist Glen Ayers found that:

1. Respondent’s disputed domain names are confusingly similar to Complainant’s WILLIAM CLINTON mark pursuant to Policy ¶ 4(a)(i). Thus the first element of the policy was satisfied.
2. Respondent lacks all rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).
3. Respondent has not registered or used the disputed domain names in bad faith; Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).

As noted below, the arbitrator's decision is questionable as a matter of common sense and UDRP precedent.  One problem that continues to persist under the UDRP is the disparity of experience, understanding or trademark law and established bias (both pro-Complainant and pro-Respondent) of UDRP arbitrators.

Additional resources regarding the issue of cybersquatting famous, celebrity and politician names:

• Celebrity Cybersquatting: Why Don't Famous People Protect Their Domain Names?
• Personal and Proper Names Protected Under Anti-Cybersquatting Act  
• Cybersquatting On The George Bush Library Name
• Political Candidate Cybersquatting: Hillary Clinton's Name Most Squatted

Domain Name Registrars & Cybersquatting: How The ACPA Applies To GoDaddy Parked Pages

We are often asked with Registrars are liable for cybersquatting, domain theft, trademark infringement, negligence in failing to process domain registrations and other issues. Under the Anti-Cybersquatting Consumer Protection Act, registrars have some protection from cybersquatting allegations, but they are not absolute. Registrars such as GoDaddy who offer parking solutions for themselves and their registrants can be held liable under the ACPA.

Understand Your Trademark Rights George Bush! Avoid Overpaying $35,000 to Get Your Domain Back From A Cybersquatter

Repeat after me everybody.  Personal and Proper Names Are Protected Under Cybersquatting Act And the Lanham Act. Here is  story that makes you think you ought do a Google search for the word 'cybersquatting attorney' or 'domain name lawyer' before shelling out big cash to pay for a domain name which incorporates your personal name or trademark.

Developer for George W. Bush library Web site paid $35K to buy back domain name | News for Dallas, Texas | Dallas Morning News | Breaking News for Dallas-Fort Worth | Dallas Morning News

Illuminati Karate paid less than $10 for the www.GeorgeWBushLibrary.com domain name – and sold it back for $35,000 to the library's contracted Web developers, Yuma Solutions, who had accidentally let it expire. Illuminati Karate recognized what the library obviously knew as well – that anything else, like www.GWBPresidentialLibrary .com, would have been cumbersome and less than ideal.

"It worked out very well," said George Huger, lead Web developer for Illuminati Karate in Raleigh, N.C. Mark Mills, owner of Yuma Solutions, could not be reached for comment.

The real head-scratcher here is that Yuma Solutions didn't have to pay anything to get the domain back from Illuminati Karate, who was clearly cybersquatting on the domain and trademark rights of the library and George Bush personally.   We posted about this previously at Cybersquatting On The George Bush Library Name. Didn't they consult and trademark attorney or cybersquatting laywer first? Of course, they still may have their $100,000 in statutory damages under the ACPA and Lanham Act to leverage if they did not sign a global release.  The domain sale simply proves bad faith under both statutes.

Verizon v Navigation Catalyst Cybersquatting Lawsuit Settled: NCS Continues to Cybersquat Trademark Protected Domains

Despite the cybersquatting lawsuit brought by Verizon, Navigation Catalyst continues to target and register trademark protected domains and famous brands, as noted below in a recent panel decision against it under the UDRP wherein it was found to have engaged in bad faith cybersquatting on 41 domains of another famous brand.  Is it time Navigation Catalysts automated registration software, which clearly targets high traffic and likely trademark protected brands, be enjoined for the good of the domainer community?

Before getting to this important question, we are apparently the first to report that Navigation Catalyst has settled the lawsuit brought against it by Verizon, as well as its counterclaims against Verizon arising out of cross-allegations of Cybersquatting under the Lanham Act and Anti-Cybersquatting Protection Act (ACPA).  The Court had previously ruled in favor of Verizon on its Motion for a Preliminary Injunction in a strongly worded opinion questioning Navigation Catalysts alleged trademark scrubbing methods and specifically finding a likelihood that Verizon would prevail in establishing bad faith registration and use by Navigation Catalyst.  The terms of the settlement of "all claims" are simple;  Navigation Catalyst agreed not to register or assist in the registration of any of Verizon's trademark protected brands.   The stipulated order of settlement required nothing of Verizon  concerning the counterclaims of cybersquatting filed against it by Navigation Catalyst for Verizon's DNS wildcarding practices which clearly infringed on 21 of Navigation Catalyst's registered trademarks.  However, these cybersquatting and trademark infringement counter-claims diminished Verizon's 'victim status' and likely provided the leverage needed by Navigation Catalyst to resolve this matter without paying millions in damages for 'bad faith' statutory damages and attorney fees as provided under the ACPA.

But did Navigation Catalyst get off easy?  Are they the institutional 'mass cybersquatter' that so many recent domainers have indicated are giving the industry a black eye?  Traverse Legal's domain dispute attorneys  recently won a Uniform Dispute Resolution Policy (UDRP) cybersquatting arbitration at the National Arbitration Forum which raises serious questions about Navigation Catalyst's alleged 'scrubbing' policies. This cybersquatting matter involving 41 trademark protected domains registered by Navigation Catalyst as noted in this panel decision.  A large number of these registrations were original registrations and must have targeted the subject trademarks, seriously undermining navigation Catalysts "whoops" defense to the bad faith cybersquatting allegations.  Moreover, many were held for long periods, well beyond the 'tasting period' where Navigation Catalyst alleged in Court that it purged its automated registrations for trademark protected domain names. Unlike the Verizon lawsuit where only  7% of the trademarked domains were held beyond the AGP, all 41 of the above noted domains were held beyond the AGP.

Registering a Competitor's Trademark in a Domain Name is Never a Good Idea and Can Result in ACPA Damages and Injunction

It is never wise to register the trademark of a competitor in a domain name.  As Silver Ring found out, registering a competitor’s trademark in a domain name can subject you to the possibility of damages and a permanent injunction under the Anticybersquatting Consumer Protection Act (ACPA).

More Commentary on the Vulcan v. Google Cybersquatting Class Action

Here is a post by Sarah Bird, who is an attorney and General Counsel for seomoz.org. She does an excellent job explaining the current state of the class action filed by Vulcan Golf (and others) against Google, Sedo, Oversee.net, Dotster, Revenue Direct and IREIT.

SEOmoz | Class Action Trademark and Anti-Cybersquatting Lawsuit Against Google and Domain Parkers Gets the Green Light

According to Google, its Adsense program for domains "allows domain name registrars and large domain name holders to unlock the value in their parked page inventory."

After a ruling by the Northern District of Illinois a few weeks ago, Adsense may also allow plaintiffs' attorneys to unlock Google's value. Or, if that is ungenerous, the ruling may allow trademark holders to lock-up the value of their registered trademarks. It really depends on your perspective and how you feel about trademarks and domaining.

Technorati Tags: Google, Sedo, Oversee.net, Dotster, Revenue Direct, IREIT, vulcan

A Specific Proposal for Stronger Laws to Protect Against Mass Bad Faith Cybersquatters

Christopher T. Varas:  "Sealing the cracks: a proposal to update the anti-cybersquatting regime to combat advertising-based cybersquatting." Journal of Intellectual Property Law &amp; Practice Advance Access originally published online on February 20, 2008.

In this article, Mr. Varas takes the position that the UDRP and ACPA are no longer effective to protect mark owners and proposes stronger laws.  Specifically, Mr. Varas proposes that a finding of cybersquatting under the UDRP result in prima facia case under the ACPA, thus making money damages more likely. You need to be a subscriber to read the full article.   Here are some snippets.

Technorati Tags: cybersquatting, brand owners, pay-per-click, PPC

Why Does the ACPA Preclude Domain Registration of Trademarks? What Makes Domain Names So Special?

ACPA Legislative History: Registering Domain Names of Established Trademarks Is Akin To Cyber-Piracy . Did you ever wonder what Congress and industry experts found in drafting the Anti-Cybersquatting Protection Act (ACPA)? See this extended post for legislative history highlights.

Many judges in the US and abroad simply don't understand the internet, let alone the domain name registration system or ICANN policies.  Too often, cybersquatting complaints under the ACPA are met with blank stares - or even worse yawns - from the bench.   

• If trademarks can be 'fairly used' to describe products or services consistent with trademark holder rights, why can't a third party use a trademark in a domain name? 
• And if trademarks can be used by third parties in certain instances in the folder or file name portion of the domain path (www.domainname/folder/filename.htm), why can't the trademark be used in the domain name itself?

Registering, trafficking or using famous or registered trademarks in a domain name without permission or license from the trademark holder is per se unlawful (of course assuming likelihood of confusion and other elements are satisfied).  Other internet uses of trademarks, such as noted above, may be legal.  The answer to the question "What Makes Domain Names So Special?" is found in the language of the ACPA statute its legislative history.

Just like a shoe store can use Nike's trademark in a shoe sale advertisement or display, a third party can sometimes claim fair use of a trademark on a web page or in the domain path to the right of the TLD.  However, a third party can not use 'Nike' in its company name, store name or domain name since these types of uses suggest common ownership, sponsorship or affiliation with Nike, Inc.

For a full and comprehesive analysis of the legislative history behind the ACPA, keep reading below ..   

Personal and Proper Names Protected Under Anti-Cybersquatting Act

Our domain name attorneys often receive questions from clients about personal name protection in cyberspace. The Wikipedia definition of 'personal name' states "A personal name is the proper name identifying an individual person. It is nearly universal for a human person to have a name." And yes, personal names are specifically protected from cybersquatting under the Anti-Cybersquatting Consumer Protection Act (ACPA). 

If you have a trademark or cybersquatting issue you may contact one of our trademark and cybersquatting attorneys for a free evaluation or call 866.936.7447 (International Toll Free).

Salle v. Meadows, 2007 U.S. Dist. LEXIS 92343 (UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF FLORIDA, ORLANDO DIVISION).  Domain registrant attempted to sell a domain subject to Plaintiff's trademark for an inflated price.  The Court held that that inflating a domain name price in an attempt to sell it to the person whose name was registered will not defeat a bad faith argument.
 
This case arose under the Anti-Cybersquatting provisions of the Lanham Act, specifically 15 U.S.C. §§ 1125 (d) and 1129(1)(A). First, Plaintiff sought relief under, 15 U.S.C. § 1129, which states that:

Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person's consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person.

Bob Marley's "WAILERS" Win Cybersquatting Lawsuit

Bob Marley's Wailers, who eventually became known simply as the "Wailers" after Bob Marley's death, successfully argued for dismissal of this cybersquatting and trademark infringement lawsuit brought by band members of another Wailers musical group who started using the band name 10 years before Bob Marley named his group in 1969.  The only evidence which could potentially have saved Plaintiff's claims against Bob's protégées would have been that the band used the mark the "Wailers" and registered wailers.com in bad faith.  No evidence of bad faith was introduced by plaintiffs.

Ormsby v. Barrett, 2008 U.S. Dist. LEXIS 20 (UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF WASHINGTON) teaches that a failure to assert trademark infringement claims in the face of know trademark infringement can result in a loss of trademark rights under the doctrine of laches.