For Sale Risk of parking .ca domains?

[DomainLobe]

Thanks Ricks for the link. That is a great post and encouraging discussion.

We need a legal expert like Zak Muscovitch in Canada.

 

[hugegrowth]

“Simply because a domain name is identical or similar to a trademark name should not result in the transfer of the domain name to the trademark owner. In my view, unless there is some evidence that the use of the domain name infringes on the use of the trademark name, a person other than the owner of the trademark should be able to continue to use the domain name.”
[/URL]

That about sums up the way it should be.

 

[Irish31]

Zak also mentioned this:

"One glaring example is that under the UDRP, “preparations to use a domain name for a web site” is considered a “use”. In Canada, under the CDRP, there is no express provision that considers “use” to include “preparations to use”. This is an important distinction because it means that you must erect a web site immediately upon registration, or risk being found to have “no legitimate interest” in the domain name because you haven’t used it. This flaw became apparent in the recent CanadaVisa.ca case"

So it seems to me, if I read that correctly, that some of us probably have names parked or just sitting vacant just waiting to be challenged a few years from now by some interested (greedy) companies.

It's looking more and more like development is about the only way to go.

 

[DropWizard.com]

Hmm here's something else I didn't know.

Cira resolution policy 4.6

Bad faith of complainant: (my words)

If the registrant is successful and the registrant proves, on the balance of probabilities, that the complaint was commenced by the complainant for the purpose of attempting to (improperly obtain a domain)...yada yada yada

The panel may order the complainant to pay an amount of up to $5000 to defray the costs of the registrant in defending.

No wonder there are so few cases started in Canada. Unlike the Urdrp there is a direct risk to the complainer. At least CIRA got that one right!!!

 

[lionfish]

The problem with parking is that domainer has no control over the ads that show up. And so, more often than not, as in the entreprise.ca case, a generic name ends up being grabbed away for no reall legitimate reason.

The judge quoted earlier here stated that a generic name should not be handed back to an entity that has a trademark on it unless there is a proof that the domain was used to infringe on that trademark. The way domain parking now works, and the fact that it shows ads generated by Google and yahoo, and the additional note that advertisers can choose where to have their ads show up, and the further note that ads on a parked page are the dynamic result of what visitors search for when they come to a parked site, leaves a huge loophole where ads showing up on a parked page can be easily manipulated thus unfairly affecting the outcome of the CDRP. Enterprise cars, can, through its AdWords account, choose to have their ads show up on entreprise.ca, then through their vast resources, can have many employess/associates visit that page and each time search for Enterprise Rent a Car making ads for that company show up on the parking page and boom....Domain is now infringing and must be handed over as it is now a generic name that can be claimed to have infringed on a trademark and thus unless registrant can prove that they have legitimate interest in the domain, the domain will likely be handed over. And legitimate interest boils down to actually using the domain for website or email which eliminates the possibility of parking.

Accordingly, and until a decision is rendered that specifically addresses the manipaulation by complainant of the parking links, parking a domain is trouble waiting to materialize.

As for $5000 reverse hijacking....It is there but, and I stand to be corrected as I read the vast majority of the decisions but not all of them, it is never awarded. We all have to keep in mind the blatant conflict of interest that exists in CDRP, namely...All fees are paid for by Complainant and so they are the clients, not the domain owner. Accordingly, if a CDRP company is seen as handing out many decisions in favor of registrants, it will likely be out of business very soon.

And don't forget...There is no appeal process with CDRP. The domainer's only recourse is canadian court and the huge expenses it entails that most of times will exceed the value of the domain itself and thus is not really an option unless in extreme cases where domain is quite valuable.

As for Zak...He is one of the top lawyers in this field and highly recommended. The CheapTickets.ca saga is the best thing that happened to legitimate domainers (i.e. those dealing with generics not blatant cybersquatter scumbags). Kudos to him and to Emall for taking this all the way to the supreme court and now we have legal decisions we can count on to help us fight reverse hijackers.

 

[theinvestor]

That's a quality first post. But i'd just like to say...you can actually prevent ads from coming up on your parked pages. It just takes a little effort and time. If you know your domain has trademarks...it's very easy to change the keyword and block certain ads.

 

[lionfish]

Thanks theinvestor.

I am curious though as to how you can prevent a company like Enterprise Rent a Car from showing up in the ads. The company has thousands of resellers and websites that promote its services. Bad faith is not just a link to the company itself but also to any of its affiliates and competitors.

How can one learn about all current and future (from time where parking started) websites that advertise can rentals?

Heck they can create a new website just for this purpose if they really want a certain domain.

In my opinion, it is next to impossible currently for one to protect a parked domain from this practice. The whole manipulation can happen over only a few days and I don't think it is possible to assume that a domainer with hundreds of domains can realistically monitor all results that show us on all his parked domains and even so, that by the time they pick up on that, it would be too late. Results would have shown and screenshots would have already be taken.

 

[Irish31]

Thanks theinvestor.

I am curious though as to how you can prevent a company like Enterprise Rent a Car from showing up in the ads. The company has thousands of resellers and websites that promote its services. Bad faith is not just a link to the company itself but also to any of its affiliates and competitors.

How can one learn about all current and future (from time where parking started) websites that advertise can rentals?

Heck they can create a new website just for this purpose if they really want a certain domain.

In my opinion, it is next to impossible currently for one to protect a parked domain from this practice. The whole manipulation can happen over only a few days and I don't think it is possible to assume that a domainer with hundreds of domains can realistically monitor all results that show us on all his parked domains and even so, that by the time they pick up on that, it would be too late. Results would have shown and screenshots would have already be taken.

What about if the domain has nothing on it, no parking, just does not currently resolve, or just comes up with an "coming soon" or "under construction" page?

I would think TM domains could still be the target of claims from companies but generics should be safe. Has a company ever demanded a registrant hand over a generic that wasn't parked or developed, simply because "they aren't using it and its similar to our business so we want it?"

 

[lionfish]

What about if the domain has nothing on it, no parking, just does not currently resolve, or just comes up with an "coming soon" or "under construction" page?

I would think TM domains could still be the target of claims from companies but generics should be safe. Has a company ever demanded a registrant hand over a generic that wasn't parked or developed, simply because "they aren't using it and its similar to our business so we want it?"

If there is no trademark on the domain, there is no case (Unless a certain word has acquired secondary meaning that qualifies it as a trademark through use but that does not apply to generics but mostly to acronyms ).

Technically speaking, a domain that is not parked nor has a website associated with it, means two things:

a) No bad faith (Unless there is a trademark and panel can see this as evidence that domain owner is trying to deny the TM holder from getting this domain, and that is bad faith. Remember that a generic name can be trademarked just not for the class of services it is descriptive of, e.g. Apple can ber trademarked for computers but not an apple fruit).

but,

b) No legitimate interest (Read the canadavisa.ca decision. Domain was only few months old, and proof was submitted that thousands were paid to develop this domain, and still the panel decided that legitimate interest cannot be proved because there is no functioning website. It is common sense that it takes time to develop a website but for some reason the panel did not see that logic. I do believe this however would not stand in court if challenged as it is quite ludicrous. One now must not only develop a domain but must do so immediately otherwise they may not be found to have legitimate interest in their domain).


Part a usually confers enough protection against any CDRP/UDRP. Again assuming there are no trademarks involved. Complainant must prove bad faith for his complaint to succeed.

Your best protection is to develop the domain and to do so ASAP.

Everything else has its caveats.

 

[DropWizard.com]

one of the issues that I have yet to see be raised is the fact that under adsense you can block ads from certain advertisers and under adwords you can block certain websites.

It's hard to claim an infringement when you can control it.

 

[lionfish]

one of the issues that I have yet to see be raised is the fact that under adsense you can block ads from certain advertisers and under adwords you can block certain websites.

It's hard to claim an infringement when you can control it.

In adsense, you can block a limited number of domains but usually a company like Enterprise Rent A car has far more websites advertising its services than the adsense limit allows.

Furthermore, adsense is not related to parking but rather developed sites. So it is not really relevant to parked domains.

That means, that one has to be careful about the developed sites with adsense as well as it is quite conceivable that a company intent on stealing your domain can trick the system to show their ads on your site.

Finally in that regard, google allows you one adsense account for all your websites which translates into the number of urls that can be blocked to get smaller and smaller with each new website developed.

Now with respect to adwords....Adwords allows advertisers to pick where their ads show up. So in reality, when a company's ad shows up on a certain parked domain, they actively chose for that ad to show up. So how they can then cry infringement is beyond me. And how no UDRP/CDRP panel has yet commented on that (as far as I know) is beyond common sense. But as mentioned earlier, the panel usually looks for a reason to transfer the domain to their clients, the complainants and so they will not bend backwards to serve domainers.

 

[msn]

The problem with parking is that domainer has no control over the ads that show up.

That is not true. You can exclude or include keywords, and if you are using a publisher account can block advertisers.

The CheapTickets.ca saga is the best thing that happened to legitimate domainers (i.e. those dealing with generics not blatant cybersquatter scumbags). Kudos to him and to Emall for taking this all the way to the supreme court and now we have legal decisions we can count on to help us fight reverse hijackers.

Until the trade mark was expunged it was viewed as a simple "cybersquatter" matter, under your world view, so was Emall a bunch of "scumbags" until the case was settled?

 

[lionfish]

'Cheap Tickets' is and will always be a generic phrase. I never referred to generics as automatic infringements and even gave the example of 'Apple'.

Same for Canadian.

Both cases won by Zak.

your trademark violations do not qualify as generics. They are not descriptive generic words but unique acronyms.

You did not lose a generic domain. You committed trademark infringement.

 

[msn]

Cheap Tickets, rightly or wrongly was a registered trade mark at the time Emall went and registered the domain. According to your finely crafted view, that made them "scumbags" until someone fought back.

Now until you provide a court document to back your claim, do be careful about how you say things, Mr. Rose.

 

[lionfish]

Lawyer Mullen (see no first name anymore ),

It is quite amusing all these identities I am being given.

First I am Bulent, then I am a sibername employee, then I am paid to post, and now I am Mr. Rose.

Who is Mr. Rose any ways?

I have already provided the definition of a generic so there is no point to be redundant. Your claim that 'cheap tickets' in reference to 'cheap tickets' is not generic falls in the same bizarre class as the rest of the claims you have been making so far about sibername. But if this makes you happy, you of course have the right to believe that and can do as you desire :uhoh: :asleep:

 

[msn]

My, I am very sorry for being confused. Just who are you - Barack Obama?

But since it is very clear that you never read the case, CHEAPTICKETS was a registered trade mark at CIPO. Under CIRA rules, that was an automatically driven issue for going after the domain by the holder of the registered trade mark. That is not an opinion, that is the policy. The people at EMall fought the registration of the trade mark itself and CIPO took away the registration of that trade mark.

Do - you - understand - it - now?

 

[Zak Muscovitch]

Great discussion guys. I enjoyed reading your views. And thanks for the Kudos regarding the CHEAP TICKETS and MOLSON CANADIAN cases.

Zak
www.DNattorney.com