Cybersquatting & Domain Dispute Attorneys / Lawyers

Domain Name Disputes Handled By WIPO Continue To Rise

DN Journal just noted that WIPO disputes have continued to increase over the past five years, linking to an article at pingdom.com.  Pingdom notes that domain disputes have doubled since 2003 and that the United States is the origin of most of the domain name disputes handled by WIPO.  Forty percent of the defendants are U.S.-based, despite the fact that the U.S. only has 15% of the world’s internet population.  Here is the chart posted on Pingdom.

Jeff Reynolds at BoycottKentucky.com Explains How Kentucky Has Created Dangerous Precedent

Play Show: Jeff Reynolds at BoycottKentucky.com

 

ANNOUNCER:  Welcome to Traverse Legal Radio Tech Spotlight.  This program is sponsored by Traverse Legal, PLC, a law firm specializing in internet law, domain disputes, and technology company representation.  That's Traverse Legal  www.traverselegal.com. Welcome to the Vertio Tech Spotlight with your host, Damien Allen. DAMIEN:  Good morning and welcome to the Traverse Legal Radio.  I am Damien Allen, and you are listening to the Tech Spotlight. This morning we have with us via the phone, Jeffrey Reynolds of Precision Marketing Solutions, Inc. Good morning and welcome, Jeff.

What’s In a Name? More and More, a Number: Numeric Value Trend Continues To Explode

The Wall  Street Journal has very interesting article on the value of numeric domain names titled What’s In a Name?  More and More, a Number Despite Limited Success of Digits, a Numeric Trend Blossoms in Internet Domain Monikers; 10012.com, Anyone?  The article plays off a previous Wall Street Journal article from “the numbers guy” Carl Bialik titled When Numbers Becomes Names.  The article suggests that web users should get used to visiting websites whose names are numeric, noting that a group in Australia plans to develop 100.com into a search engine that will deliver the 100 most relevant results, as well as a number of other examples.

Domain Name Dispute Update: Should Complainants in UDRP Proceedings be required to Provide Certified Notice of Other Legal Proceedings Related to Their Trademark Claims

The recent Chillibeans.com panel decision raises some interesting questions.  Not apparent in the decision is the fact that the trademark alleged by the complainant is the subject of a cancellation proceeding at the OAIM, Trademark and Design Registration Office of the European Union. This fact was not disclosed by complainant as part of their filing, and not discovered by respondent until after an adverse panel decision had been rendered. 

The cancellation proceeding was filed by a company called Chili Jewels. Cancellation proceeding number is 000003092.  Because UDRP proceedings are so heavily tied to complainant’s trademark rights, and the review of those trademark rights is relatively lax compared to a federal court proceeding, one is left to wonder whether the UDRP should be amended to require disclosure of any adverse proceedings concerning those trademark rights.  This would be an easy amendment to the proceeding. Further, it is hard to imagine how the amendment would spark much controversy.  While such information would provide a more complete picture of the trademark rights of complainant, not much additional work would be required of the arbitrators.  While is it unknown whether or not such disclosure would have impacted the panel’s decision in this particular matter, the important point is this. The panelist deserve to have as complete a picture of complainant’s trademark rights as possible.  The fact that a trademark is subject to a cancellation proceeding, or has otherwise been challenged, is a key component of that complete picture.  In instances where it is clear that the cancellation proceeding  will likely prevail, for instance because of a preexisting trademark which clearly overlaps with the complainant’s mark, then this factor should be accounted for in the decision. 

The Parking Page Dilemma: Frank Schilling loses chillibeans.com domain under UDRP

There has been some commentary about the recent Uniform Domain Name Dispute Resolution Policy (UDRP) decision against white hat domainer Frank Schilling's regarding the chillibeans.com domain. For those who have been paying attention, this decision is not so surprising. Rather than label the decision ridiculous domainers need to appreciate that this decision is not outside the norm or trend under the UDRP and make smart business decisions about parking their most valuable domainers. 

In a unanimous 3 member panel decision by William R. Towns, M. Scott Donahey & Sir Ian Barker, Schilling was found to have engaged in bad faith cybersquatting , under the UDRP by registering the domain chillibeans.com after Complainant had registered trademark rights for "chili beans" for the sale of sunglasses. Schilling was represented by John Berryhill.

Now, anyone who knows Frank also knows that he had no knowledge or notice of the prior trademark rights in the non-dictionary use of chili beans when he registered the domain. The problem is that Frank, like all other domainers, are stuck with a parking system that delivers advertisements for non-dictionary uses of otherwise generic domains (ie trademark uses).  In this case, Frank's parking page software served up some limited adds for 'eye glasses' in addition to food items. We have posted about the need for more sophisticated software (and support from Google as well) which allow PPC advertisers to exclude certain product offerings from the parked pages before:

• Excluding Keyword Categories From Your Parked Pages In Order To Avoid Cybersquatting Violations
• Parking Pages Can Create Risk Of A Finding Of Bad Faith Under the UDRP
• One of the Rarely discussed Benefits of Domain and Website Development
• The Three Views of Trademark Cybersquatting
• Hobbits v. Hobbitts: Generic Mark Argument Won't Prevent Panel From Seeing Pay Per Click Parking as Bad Faith
• "Low Value" Domain Parking Pages Results In Another Lawsuit Against Google By Advertisers

There are three lessons every domainer --  at least those who are willing to deal with the legal realities under the UDRP and ACPA  --  should take from this decision. (1) do a trademark search for every valuable domain within your portfolio, (2) exclude ads to the extent you can from being served up on your parked pages which include products in trademark protected areas and (3) consider excluding your most valuable domains from parking programs all together (they are worth more 'for sale' than from parked revenue).