"nhn.com" decision

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http://members.aol.com/MagicDan/docs/history.html

 

[options]

Actually there are hundreds of odd issues here.

Let's try to address the most simple ones.
Remember, we are talking mainly about short acronyms here.

- What should be the main criteria for granting a name in such cases?
Money, company size, marketing recognition, date of incorporation?
What if "NAVAIR Headquarters Network" claims the NHN.com too? First come, first served basis?

- Can M$oft claim TM on the letter "M" or at least "MS"?

- What is Internet? What if some substantial part of the world population starts using other DNS root servers e.g. http://european.nl.orsn.net/faq.php and they suddenly decide to introduce completely different .com or any other tld rules?

- In some cases courts have reversed WIPO decisions. Do they (courts) have right to do so?

- Do a profit oriented corporation have a right to claim .org or even .net?

- Does the current "bad faith" view clashes with constitution(s)?
Isn't trading, (re)selling goods for profit exactly the same thing? Majority of trading companies don't buy goods for their own use.

- What if someone didn't start a business yet, but his first step was acquiring a name?

- Isn't this bad faith: http://www.zaforsale.com/ ?
They somehow succeded in obtaining TM for the two letters "ZA", pegged to "pizza products" (?) and they are selling or leasing all the rights associated with the TM.
Can you think of worse "bad faith" example?


Can anyone else try to explain the general "common sense" in the current policy?

 

[lopramine45]

doesn't sound like dilution is occuring

 

[dax]

That doesn't make sense.

Being an acronym or not isn't even an issue, it's how it was being used.

If someone bought IBM.com before IBM, not necessarily a big deal. But if they tried to sell computers on it, lookout. Someone could use KFC.com for any number of things, but if they tried selling chicken on it, it's a definite TM violation.

There are millions of similar TMs around the world consisting of only 2 or 3 letters... And if i hold TM for selling computers named IBM in my country and International Business Machine Corporation in the rest of the world (but not in my country because i TMed it first), nobody cant dispute my legal rights to sell computers named IBM in my country and have ibm.com (that i registered first) to sell computers online... I registered ibm.com in good faith and have legitimate rights to use it (hipotetically speaking). So, you see, TM is geographically oriented right, not product/service-based right on a global basis...

BTW, notice in Tenenhaus v. Telepathy Inc., NAF Case No. 94355 (complainant not entitled to exclusive use of 3-letter combination DAF); Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105 ("use of short terms …even for sale, is a legitimate business."); Kis v. Anything.com Ltd., WIPO Case No. D2000-0770 (registration of 2 and 3-letter domain names found to be legitimate.) that all Respondents are well known domain selling firms... So neither "transparent" selling 2 or 3 letter domains (that are similar to someones TM) is not treated as "bad faith".

 

[jberryhill]

Dax,

Nobody disagrees with the proposition that the complainant must show more than identity or confusing similarity with a trademark. I represented the domain name registrants in the wbw.com, xfm.com, eaa.com, and pwc.com UDRP proceedings. So, I'd like to believe I know a few things about three letter domain name disputes.

Where there is a clear lack of proof of trademark rights; or where there is no basis to conclude the domain name registrant was intentionally attempting to profit from the goodwill in a trademark known to the registrant (or for which there is good reason to believe the registrant should have known it was a trademark); or where there is a pre-dispute legitimate use or preparation to use the domain name; then, absolutely, respondents have had no problem winning UDRP disputes.

None of the cases I've won, or the ones you mention above, stand for the proposition that when you have a couple of guys in country X playing what smells like a bogus shell game to hike up the bidding for a domain name that corresponds to a well-known trademark in country X, that the respondent is going to win.

It is absolutely true that the British Broadcasting Corporation cannot dislodge the Canadian computer user group Big Blue & Cousins from their bbc.org domain name. It is also true that if asked to provide evidence of their legitimate interest, the bbc.org people could produce reams of evidence showing their legitimate use of the domain name, and wouldn't simply ignore such a request in the course of a proceeding.

These things don't boil down to simple rules like "it's okay to sell three-letter domain names" or "it's not okay to sell three-letter domain names". Absolutely, if you have rights to use IBM as a trademark in your country in connection with the way you are using your domain name, then God bless you and your domain name. But it is also true that if someone registers a domain name that they know to be identical to a well-known trademark, and they come up with a post-hoc rationalization based on some acronymic significance that is not backed up with any a priori evidence of registration for that purpose, then a panelist is going to reach for the "I smell BS" button.

In the NHN case, you have someone who is all over the map on whether or not the domain name is for sale and for what price, and as soon as the bidder says "trademark", then he and his buddy establish a corporation on the other side of the planet, claim that's why they registered the domain name to begin with, and then can't cough up a shred of evidence to support their claim that it was their plan all along to use it for a National Health Network. Simply saying, "Hey, I was trying to sell a three-letter domain name" sounds infinitely more upfront than trying to patch together a story that doesn't hang together logically or chonologically.

 

[Deleted member 4749]

goddamnit

 

[lopramine45]

haha

 

[Garry Anderson]

John - on page one, you did not deny that "The owner of nhn.com could have LEGALLY started his own company with it or LEGALLY sold it to another person for this purpose."

Indeed they were in the process of selling it (although somewhat crudely).

Yes - they may have tried "hike up the bidding for a domain name" with a tall tale to get $250,000.

So what, that they were not upfront saying "Hey, I was trying to sell a three-letter domain name" - most likely because they thought WIPO would use it as excuse to take their domain.

But they did nothing illegal - did they?

LEGITIMACY: The secondary market is legitimate commerce - used by big business. Proctor and Gamble had thousands of domains and were selling many off, they had beautiful.com valued at three million dollars.

IP RIGHTS: Clever people had the idea FIRST - to get these words and initials as domain names. Words and initials that can LEGALLY be used by MANY different businesses or for personal use.

The Complainant KNEW that "the intials have inherent legitimate uses up the wazoo" (Dans words) and even offered $50,000 for the Domain Name.

That did not work - so they tried corrupt UN WIPO's UDRP - and won.

It is my informed opinion that panelist's Tony Willoughby, Sang Jo Jong and Sally M. Abel aided and abetted in trademark overreach using WIPO UDRP.

Unless you can say what exactly was being done unlawfully by owner of nhn.com - then that would become a fact, wouldn't it ;-)

 

[lopramine45]

ugh, ICANN

 

[jberryhill]

"Indeed they were in the process of selling it (although somewhat crudely)."

No, they were in the process of lying about having a legitimate purpose while trying to extort a trademark owner on the basis of what was considered to be their more likely than not knowledge of the value of that trademark in their native country.

Is it possible to LEGALLY kill people? Sure, there are all sorts of circumstances where it is perfectly legal to kill another person - soldier, executioner, self-defense, etc. But legal proceedings don't deal in what may have ocurred in some hypothetical situation. The question is what was going on HERE, in THIS situation. And in THIS case, the panel wasn't buying what the Respondents were selling, and even asked the Respondents to provide more factual support for their position. The inference to be drawn by the fact that the Respondents didn't bother to pony up the requested evidence is that they didn't have any.

Garry, I've defended more three-letter domain names than you will ever own. If you can't see the difference between a winner and a loser, that's your problem, not mine. Just please stop offering bad advice to people.

 

[dax]

John said: "trademark known to the registrant".
I said "but not in my country because i TMed it first". Knowledge about existing well-known TM is completelly subjective fact. I must say that i heard about Kentucky Fried Chicken (KFC) just yesterday... Maybe 99% of the readers here heard about it years ago, but not me, sorry (sincerelly). So, as you see, its not a base you can put every legal matter on it.

In the case of pwc.com (i must congratulate you about it, exemplary work), how can you proove that UltSearch (if im not mistaken) did NOT know about Price Waterhouse Coopers? Even i was aware of PWC. You see, you are changing sides as wind blows And, BTW, i said for IBM - hipotetically speaking -> meaning that it could be any other 3LA... Look at it as MBI.com for a change. Maybe IBM is too well-known for this hipotetical talks...

John said: "lying about having a legitimate purpose"
Dont mind me asking - but how do you know they were "lying", and that they did not had legitimate interest to use it? Can you (without any doubt) say that they were lying? I sure cant. Mind-reading machines are not invented yet AFAIK. If you have one, please give it to me for a few days to see if previous nhn.com owners did not have any legitimate interest in their domain...

And one more thing - tell me, whats the difference between pwc.com and nhn.com? In the end, UltSearch SOLD it to the PWC. Where was legitimate purpose there???

 

[jberryhill]

Because, prior to any notification of a dispute, Ultimate Search was using the domain name pwc.com to provide links relevant to personal watercraft. In fact, if you put PWC into most PPC search engines, the overwhelming results you get are for personal watercraft and accessories, because pwc is the generic acronym for personal watercraft.

http://www.jetski.com/section.cfm?id=67

Actually using a domain name for a legitimate purpose, or having made documented preparations to use a domain name for that purpose, prior to notification of a dispute is an important factor in determining whether someone had a good faith use in mind, or if they are simply making up some post-hoc rationalization. So, if you are looking for a difference, tell me what was the nhn.com domain name being used for before these guys received any indication that someone might make a trademark claim?

There are innumerable areas of legal disputes where one's state of mind matters. No, there are no mind reading machines. So what you do is you look at the evidence and you make a decision about what was or was not the most likely explanation. In the NHN case, the respondent was specifically asked to provide some evidence supporting their story. The request itself indicates the panel was perfectly ready to consider such evidence and to find in the respondent's favor. The respondent refused. So, what inference do you draw from that? In civil disputes, the standard is not "without any doubt" but is "more likely than not". That is precisely why the UDRP refers to use or preparations "before notification of a dispute". Anybody can come up with some kind of rationalization after the fact, but evidence of what you were doing prior to someone making a claim is a much more reliable indication of what you had in mind.

"I said "but not in my country because i TMed it first"."

I know. In that case you would win. In fact, I challenged Garry Anderson to guess whether or not most contested two or three letter UDRP's are won by the complainant or the respondent. He decided not to take a proposition on that question because he doesn't want to pay me again, even though I still haven't counted.

"You see, you are changing sides as wind blows"

Not at all. When you are using a generic term for its dictionary purpose prior to any notice of a dispute, such as using pwc for personal watercraft, it is a very different situation from the shifting explanations given for NHN.

And, yes, presuming knowledge is a risky endeavor. Interestingly, the panel had a Korean member, and the respondent was also Korean. In Korea, NHN is a more popular portal than Yahoo! (http://www.stargeek.com/item/26198.html), so you tell me... Is it "more likely than not" that someone who obviously is engaged in an internet-oriented business in the US has heard of Yahoo! ? Come on... that's a no-brainer.

That is also why I brought up bbc.org. The UK BBC sent them a letter, got an answer, realized it was apparent their use was legitimate, and went on their merry way. Now, if the domain name bbc.org was not being used for anything in particular, and the registrant had made up stuff about $250K purchase offers, and then when confronted with the TM claim said, "Oh, well, we were really planning all along to use it for Big Brown Cows" but didn't respond to a specific request from a UDRP panel for evidence of that assertion... what would you think was "more likely than not"?

 

[options]

The question is what was going on HERE, in THIS situation. And in THIS case, the panel wasn't buying what the Respondents were selling, and even asked the Respondents to provide more factual support for their position.

So, the decision was made on basically these two premises:

1. The Respondent was lying (?) about the way they intended to use the name for conducting a business.

2. The name fits more to one of the two parties, in this case one of probably many trademark owners (somewhere in the world) for the acronym, for some xyz product/business.

 

[jberryhill]

Put simply, #1, not #2. "Lying" is a strong word. I would rephrase that as "the panel did not find their explanation on legitimate rights and interests to be credible". Which is why the panel took the extra measure of asking for more information.

The "fits better" thing is not a criterion. These guys had a specific history of correspondence with the Korean NHN. If it was some other NHN out of the blue, then the result may have been different.

Again, by comparison, in the PWC case, the respondent had received a competing claim from Pratt & Whitney Canada. However, the respondent was doing nothing that suggested an intent to capitalize on either PriceWaterhouse's claim or Pratt & Whitney's claim.

 

[options]

Now, if the domain name bbc.org was not being used for anything in particular, and the registrant had made up stuff about $250K purchase offers, and then when confronted with the TM claim said, "Oh, well, we were really planning all along to use it for Big Brown Cows" but didn't respond to a specific request from a UDRP panel for evidence of that assertion...

Now, again: what gives "The British Broadcasting CORPORATION" EXCLUSIVE rights for use of the BBC acronym? TM on news coverage? Also for TBBC?

Since when is "bad faith" to register/buy a wide-scope-usage domain name as a commodity, for pure speculative purposes?

 

[dax]

John, we could argue for a long time about that generic term "pwc" and what UltSearch used it for, but i do not want take your (and mine) precious time. I can only say that there are too many unconsistent rulings in UDRP cases (like nhn.com) and thats my whole point

John said: "There are innumerable areas of legal disputes where one's state of mind matters."
I agree. Just, its being often used in favor of "bigger one" (when there is no arguments to clearly proove something against "smaller" guy). Lack of objective facts only leeds to a (arbiters) preference IMHO...

John said: "Is it "more likely than not" that someone who obviously is engaged in an internet-oriented business in the US has heard of Yahoo! ? Come on... that's a no-brainer."
Normally, i would agree. But if we want to make rulings at the UDRP cases more consistent, than there should be no difference between nhn.com, pwc.com, daf.com... You see, somewhere TM similarity is challenged by "personal watercraft" and questionable legitimate interest, and somewhere TM is "too similar" and legitimate interest does not exist at all... This is why i am trying to stand for a fact that 2, 3 or even 4 letter acronyms should not be disputed within UDRP at all...

 

[jberryhill]

"You see, somewhere TM similarity is challenged by "personal watercraft" and questionable legitimate interest, and somewhere TM is "too similar" and legitimate interest does not exist at all"

I'm not sure whether you get the point that there are three different things the Complainant is required to prove. Absolutely, no human decisionmaking system is going to produce 7,000 consistent decisions. But what is important in any given case are the factual circumstances of that case.

It could well be that someone chose a three letter domain name for purposes that had nothing to do with the claimed trademark. It could also be that someone deliberately chose those three letters with the trademark in mind for the purpose of ripping off the trademark owner. You aren't going to have a rule that makes the outcomes "consistent", when the facts of those two circumstances are very different. That's why I put the question to you - what *were* they doing with NHN.com prior to the trademark claim being made, and does that use support their stated rationale or not.

And, the BBC does not have exclusive rights to that acronym for all intents and purposes. But if instead of a Canadian computer club using bbc.org, for example, you had someone in the UK bidding up the BBC to six figures and then turning around and saying "I registered it for my hobby of raising big brown cows" when there is no evidence that the guy has ever been near a farm, then you might be inclined to believe it is more likely that he had something else in mind in his registration and use of the domain name.

When you take a look at the pending cases and you see something like "americanexpressblue.com", then you would suppose that guy is going to have to come up with a pretty interesting justification for having registered that domain name, if he bothers to respond. Much more so than, say "dong.com", which is also pending at the NAF. Some trademarks are more well-known than others, and that is also a factor in the credibility of the response. Is there a trademark on HGF (picking three letter at random on my keyboard)? Maybe, maybe not. Maybe someone might register the domain and use it for information about human growth factors. But "IBM", "AOL"... they are pretty well known, and if they are not in use before the TM owner comes a'calling, then you've already lost points 1 and 2 of the three things the UDRP requires to be proven by the Complainant.

 

[options]

And, the BBC does not have exclusive rights to that acronym for all intents and purposes. But if instead of a Canadian computer club using bbc.org, for example, you had someone in the UK bidding up the BBC to six figures and then turning around and saying "I registered it for my hobby of raising big brown cows" when there is no evidence that the guy has ever been near a farm, then you might be inclined to believe it is more likely that he had something else in mind in his registration and use of the domain name.

Sure. He wanted to (re)sell the name and make money on it.
The range of possible buyers is pretty wide, with noone having exclusive rights on the name.
If someone buys oil well and doesn't not exploit it, does Shell have a right to claim it for free?

Now, if someone afraid of already strange panels' decisions tries to play the game in a twisted way and gives non-credible explanations, there could be some punishment for that, but shouldn't have any influence on right decision.
They found out, beyond doubt, that the respondent's main reason actualy was to sell the name, even to one of TM owners. So what?
They didn't use the name infringing given TM rights. They didn't use the name at all.

 

[dax]

John said: "I'm not sure whether you get the point that there are three different things the Complainant is required to prove."

Dont worry about me. I understand UDRP very well and have seen many UDRP cases

 

[Jernet]

I think the loss is bogus, myself. The only way he should have lost it, is if he was an idiot like that guy who lost staple.com to Staples

As long as he wasn't making any references to NHN Corporation, or acting like he was part of that corporation, to either make a profit, or to gain illfull traffic...who cares what his plans or intents are?

I believe he has a right to own it, and unless he was ingaged in some kind of illegal activities, how can this decision be upheld?

I always thought it was "Innocent Until Proven Guilty", it seems this case is opposite. Instead, this guy was stamped as "guilty" and now has to try to prove himself as "innocent".

I have domains that I have registered for 5-6 years, and STILL have not made a site of them. Even tho I have some good ideas and intentions, I can't PROVE what my plans may be, because they are in my head only.

This whole thing stinks, and I can imagine this kind of garbage will be more and more commonplace as the internet grows....what a shame