Elequa loses NRA.net UDRP case

[Raider]

Have you visited those other extensions ? If elequa was found to be using it in bad faith than they are too Id imagine. That is why I asked John about parking etc.

Are the links that are currently showing on .net, the same links the NRA claim were infringing? I'm sure if someone clicks on every link showing on the .us page, there might be some reference to guns or self defense, ammunition for the NRA to go after that as well...just as you were referring too.

 

[TheLegendaryJP]

Exactly, that is what scares me about parking my premium generics/acronyms. I am strongly considering throwing away $XXXX a month in earnings because of it.

 

[Slipxaway]

Have you visited those other extensions ? If elequa was found to be using it in bad faith than they are too Id imagine. That is why I asked John about parking etc.

In the .net case it was found that they had direct listings for products that would cause confusion amongst the members of NRA members... It was blatantly bad faith, because you cant claim that an acronym is generic and you aren't infringing on a TM, when you're showing ads for the specific products that the TM owner sells or is affiliated with.

The .info is in violation of this as well, because it does the same thing.

The .com has the strongest case IMO, because they just have an altogether general category search, which would be hard to prove that it is confusing and in bad faith. Nothing is certain though.

 

[malmar2]

Exactly, that is what scares me about parking my premium generics/acronyms. I am strongly considering throwing away $XXXX a month in earnings because of it.

Your name sounds like the exception JP, but most acronyms are not valued on PPC and in fact produce very little ppc revenue - particularly once you filter out the obvious tm keywords.

In light of recent cases parking valuable 3 letter domains is just not worth it, imo.

 

[jberryhill]

It was blatantly bad faith, because you cant claim that an acronym is generic and you aren't infringing on a TM, when you're showing ads for the specific products that the TM owner sells or is affiliated with.

That's the reasoning that quite a few panelists are beginning to follow in these cases.

The UDRP was meant to address situations where the domain registration itself was motivated out of an intent based on the trademark claim. The problem with these PPC cases is that, most of the time, the domain registrant has never heard of the TM, registered the domain name for other reasons, and has no control over the search results which are generated. So the truth of the matter is that the TM did not motivate the domain name registration.

The problem is that the Panelists are turning these into infringement disputes, rather than pure cybersquatting disputes. They see a link to material which is arguably related to the TM subject matter, and they are blaming the domain registrant instead of the advertisers who quite often are (a) making authorized or legitimate fair use of the mark, or (b) are themselves the culprits of the apparent infringement.

The upshot is that because the only thing the panel can do is transfer the domain name, then that's what they do, rather than to recognize the limited set of circumstances to which the UDRP was intended to apply, or to suggest that the complainant should seek relief against infringement against the advertisers in a more appropriate forum.

Cases have gone both ways on this issue, and it reflects a deep-seated difference of opinion among UDRP panelists. I can understand the sentiment on both sides of the issue, and there is no requirement that UDRP decisions be consistent.

 

[TheLegendaryJP]

Thanks John.

How does everyone feel this little disclaimer I found on the bottom of one parking site would do to protect you ?

Disclaimer: Domain owner maintains no relationship with third party advertisers. Reference to any specific service or trademark is not controlled by domain owner and does not constitute or imply its association, endorsement or recommendation.

 

[Brett Lewis]

Cases have gone both ways on this issue, and it reflects a deep-seated difference of opinion among UDRP panelists. I can understand the sentiment on both sides of the issue, and there is no requirement that UDRP decisions be consistent.

For what it's worth, I agree 150% with everything that John wrote in this thread. There is no requiremeent that UDRP decisions be consistent. There is no "law of the UDRP," so to speak, that panelists are required to follow. Prior decissions can be persuasive, but there is no requirement that Panelist B follow the decision of Panelist A, even if they are dealing with the same second level domain but different TLDs, as with NRA.net and NRA.com.

My sense about disclaimers is that the same panelists that are transferreing domains today will likely still find that the domainer profitted from the mark. "One may not be willfully ignorant of trademark infringing advertisements that generate revenue for a respondent . . . clearly, respondent knew that revenue was being generated from trademarks, as is shown by its attempt to disclaim liability . . ." Or something like that. You can try, but it may not help.

Brett E. Lewis
Lewis & Hand, LLP
www.lewishand.com

 

[jberryhill]

And for what it's worth, I should have mentioned Brett as well.

If I get time, though, there was another decision this week involving descriptive use of an arbitrary mark that had a real howler of a punchline.

 

[actnow]

It is a sure bet that Kenyon & Kenyon charge a ton of cash more than Ari Goldberger, Steve Lieberman, Steve Sturgeon, and other attorneys with established records defending domain names.

I believe the first mistake Elequa made was when he moved his acct from
Lieberman to K&K.

Apparently, Stevan did a good job when he defended Elequa in the landmark case over KIWI.com

http://www.wipo.int/amc/en/domains/decisions/html/2004/d2004-0848.html

The Complainant is Kiwi European Holdings B.V., Utrecht of Netherlands, represented by Sara Lee/DE N.V., Netherlands.
The Respondent is Future Media Architects, Inc, Tortola, British Virgin Islands of United Kingdom of Great Britain and Northern Ireland, represented by Greenberg & Lieberman, United States of America.
..........
The Panel finds that the Complaint was brought in bad faith in an instance of reverse domain name hijacking, based upon the complete lack of evidence that the disputed domain name, a generic term, was registered or is being used for reasons related in any way to Complainant or its mark.

We all make mistakes. The question is - will Elequa stay with K&K?
Or, will he accept the explanation that - "This happens sometimes."

Elequa has some of the best inventory of generic domains.
Now, he has to be more careful since he lost the NRA.net domain.

And, it can be held against him in future cases.

Future complaints will try to prove that he is a cybersquatter.

Elequa is a very intelligent businessman.
Hopefully, he won't make the same mistake twice.

 

[GeorgeK]

Stevan Lieberman had a good defence in the SYR.com case, too:

http://www.wipo.int/amc/en/domains/decisions/html/2003/d2003-0729.html

 

[Biggie]

The problem is that the Panelists are turning these into infringement disputes, rather than pure cybersquatting disputes. They see a link to material which is arguably related to the TM subject matter, and they are blaming the domain registrant instead of the advertisers who quite often are (a) making authorized or legitimate fair use of the mark, or (b) are themselves the culprits of the apparent infringement.

This is a very good point!

I used a variation of this reference, during a phone conversation concerning a parked domain that a lawyer claimed was infringement.

He said "the ads were related to the firm he represented".

So, I asked, "who pays for the ads to be on the site"...

a long pause, then he admits that they do!

so i say, "well then...seems like your getting what you paid for"

i never heard back from them.

 

[typist]

This is a very good point!

I used a variation of this reference, during a phone conversation concerning a parked domain that a lawyer claimed was infringement.

He said "the ads were related to the firm he represented".

So, I asked, "who pays for the ads to be on the site"...

a long pause, then he admits that they do!

so i say, "well then...seems like your getting what you paid for"

i never heard back from them.

I agree. If I would need to go after possible cybersquatters, I'd try to avoid getting entangled in questionable trademark related claims.

I once had a similar experience as quoted above. At first, on the phone, this lawyer just ignored my point that his client was paying for the advertisement he claimed was infringing. He was very persistent, until I sent him the T's & C's of the agreement with Google by which his client was bound as an advertiser (I've included some interesting clauses below). I never heard back from him.

I have a feeling that some lawyers seem to think it gives them more clout in their strong-arming attempts if they make all kinds of claims, rather than focusing on cybersquatting. Besides the ususal trademark related claims, one guy even added phishing to his list of reasons why he didn't like me and my parked (!) domain.

For the sake of being thorough, I asked the parking service provider, a well-reputed company within the industry, if they had ever been using my domain for phishing purposes. Surprise - they had not, and I sent some equally kind, but better documented claims to the head of the legal department of the bank in question, asking him to stop his underling from making false allegations. Never heard from them again either.

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