Upcoming UDRP cases -- arcade.com and others

[GeorgeK]

Nice win, John!

NAF should reorganize their domain decision site --- WIPO's is a lot easier to use.

 

[jberryhill]

I've told them that....

What you can do is, once a week or so, use the NAF's decision search tool to simply sort all decisions by commencement date, for upcoming cases, and by decision date, for most recently decided cases.

Viewed that way, it's actually a little simpler than WIPO's posting by case number. But you can't beat WIPO's email notification service of each day's decisions.

In any event the carnivalcasino.com case was properly decided within the limits of what the UDRP was, and was not, intended to do.

 

[GeorgeK]

NAF took away beam.com from Mrs. Jello....awful decision:

http://www.arb-forum.com/domains/decisions/599041.htm

"Further, Respondent&#8217;s use of the domain name was not a bona fide offering of goods or services, or a legitimate fair use or noncommercial use. Rather Respondent derives income from the service of allowing others to advertise their goods and services through its <beam.com> website."

That's saying that advertising income is illegitimate! I hope Igal appeals that one.

 

[stuff]

NAF took away beam.com from Mrs. Jello....awful decision:

http://www.arb-forum.com/domains/decisions/599041.htm

"Further, Respondent’s use of the domain name was not a bona fide offering of goods or services, or a legitimate fair use or noncommercial use. Rather Respondent derives income from the service of allowing others to advertise their goods and services through its <beam.com> website."

That's saying that advertising income is illegitimate! I hope Igal appeals that one.

another lost for Igal

 

[GeorgeK]

Here's another pathetic decision, for IowaGames.com:

http://www.arb-forum.com/domains/decisions/600886.htm

Placename+Games.com is pretty generic. They only had a STATE TM, lol.

"Respondent is using the <iowagames.com> domain name to redirect consumers to Respondent&#8217;s commercial website that features links to third-party websites that are unrelated to Complainant. The Panel finds that Respondent&#8217;s use of a domain name that is identical to Complainant&#8217;s mark to divert Internet users to third-party websites does not constitute a bona fide offering of goods or services pursuant to Policy &#182; 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy &#182; 4(c)(iii)."

So, if you linked to sites related to the complainant, you're damned. If you link to sites unrelated to the complainant, you're still damned! Heaven forbid someone wants to build a website selling games to Iowans.

 

[jberryhill]

awful decision

Quite. There was a mountain of argument and evidence on both sides, and the Panel decision hardly reflects what went on.

So, if you linked to sites related to the complainant, you're damned. If you link to sites unrelated to the complainant, you're still damned!

Indeed, that point was made in the arguments.

 

[GeorgeK]

NAF reads DNForum.com, by the way (I noticed a visit to my personal website via a DNForum.com referral link in my webserver logs, and the IP address was within their corporate IP addresses).

There are blatant TM abuse cases that are easy to judge, but there are others that are in grey areas that NAF seems to regularly hand over to the complainants due to circular or bad logic like that above.

Hopefully one of these days a Respondent like Marchex, BuyDomains, NameAdmin or someone else with deep pockets gets one of these bad decisions and overturns it in real court, thereby creating the precedents that NAF's panelists can't ignore. I know my own portfolio is very clean in regards to focusing on generics, and if someone brought a flimsy case like that, they would regret it.

 

[Yojimbo]

Why is there no middle ground in any of these decisions. It's hard to argue that Beam.com isn't a generic term. Sure, it was used in a manner that may have diverted people looking for a Beam vacuum to a competitor but that is the nature of PPC. Couldn't the panel have let the Respondent hold the name but prohibit any vacuum advertsing on the site? Wouldn't that have satisfied both parties (assuming that it was the diversion that Beam vacuums was actually upset with). The same could be said for the Tesla.com name.

 

[jberryhill]

Couldn't the panel have let the Respondent hold the name but prohibit any vacuum advertsing on the site?

No, and that's the problem with runaway UDRP panels. The only tool they have is a binary outcome. That's why the UDRP was intended to be limited to no-brainer cases of cybersquatting. A court can do all sorts of things, but a UDRP panel can only say "transfer/no-transfer". It's not a trademark infringement court.

What's happening in PPC cases is that complainants will hammer away at the search bar for weeks... get their stuff to show up in "popular searches"... and then say, "see, he's advertising my stuff". It's pretty sleazy.

 

[GeorgeK]

thelittleprince.com case was decided in favour of the Complainant in a case where the Respondent made no defence:

http://arbiter.wipo.int/domains/decisions/html/2005/d2005-1085.html

I think the panel reached on this one, because the TM that existed was for the French phrase "Le Petit Prince", and NOT for the English translation "The Little Prince". This would open up a huge can of worms if translations of terms are going to get automatic protection.

Glad I didn't have to defend this one, as I had tried to buy this domain years ago. Someone's watching over me.

 

[GeorgeK]

24poker.com's UDRP (brought by 24hpoker.com) was DENIED, despite the respondent default. Good to see a panelist use some critical analysis for a change:

http://arbiter.wipo.int/domains/decisions/html/2005/d2005-1097.html

Still no decisions for arcade.com and partybackgammon.com.

 

[jberryhill]

Hopefully one of these days a Respondent like Marchex, BuyDomains, NameAdmin or someone else with deep pockets gets one of these bad decisions and overturns it in real court, thereby creating the precedents that NAF's panelists can't ignore.

Been done. Everyone ignores it, but the freebies.com decision was overturned, and the court said the NAF decision was without foundation in fact or law. The NAF still engages the panelist.

There are several UDRP decisions which have been overturned in court - freebies.com and barcelona.com just to name two off the top of my head.

There's another one in the pipeline

Marchex and Name Admin, of course, have never lost one.

 

[GeorgeK]

It would be nice to see a press release for the freebies.com court ruling -- it might make NAF think twice about issuing all those press releases when the complainant "wins". Plus, it might make a few sloppy panelists do their homework better.

 

[draqon]

how expensive is it to overturn a UDRP decision in an American court? If i lose a UDRP and want to fight it, what amounts are we looking at?

 

[jberryhill]

how expensive is it to overturn a UDRP decision in an American court? If i lose a UDRP and want to fight it, what amounts are we looking at?

There are a lot of variables. The NAF decision in buypc.com was challenged, the tm claimant defaulted, and it was a default win for the domain registrant. Barcelona.com was challenged, lost at the trial court level, and was overturned on appeal to the fourth circuit. I would guess that all that nonsense easily ran to $50,000. I volunteered time on that case, including blowing a day on the appeal hearing, that was never charged. Ari Goldberger also volunteered time on that one - it was a group effort. Strick.com was also done pro bono. Nobody can afford to give up that much time on a regular basis, but what it would cost can be a few hundred dollars to many tens of thousands of dolllars, depending on the circumstances.

 

[Dave Zan]

There's another one in the pipeline

You actually used a forum smiley! How rare. :-D

Anyway, I do remember another one that went thru a ringer: fallwell.com.

UDRP decision: http://www.arbforum.com/domains/decisions/198936.htm

District Court decision: http://www.phillipsnizer.com/library/cases/lib_case352.cfm

(sorry, I couldn't find link to actual decision for above.)

Court of Appeals 4th Circuit decision: http://www.citizen.org/documents/LamparellovFalwellFourthCircuitDecision.pdf

 

[izoot]

No, and that's the problem with runaway UDRP panels. The only tool they have is a binary outcome. That's why the UDRP was intended to be limited to no-brainer cases of cybersquatting. A court can do all sorts of things, but a UDRP panel can only say "transfer/no-transfer". It's not a trademark infringement court.

What's happening in PPC cases is that complainants will hammer away at the search bar for weeks... get their stuff to show up in "popular searches"... and then say, "see, he's advertising my stuff". It's pretty sleazy.

Do PPC providers such as DS, FAB, TrafficZ ect archive all the logs from the domains? Something has to be done about these unsavory companies pulling this crap on us.

It would be an amazing resource to have access too ... if these scumbags do hammer your site continually from a limited number of ip's they would be able to supply the logs for us for use in proving reverse hijacking/Harassment.

It would also be great to have access to ppc logs for specific names just for research purposes ... potential clients, marketing researc for later build out. ect.

 

[GeorgeK]

arcade.com got decided in favour of the respondent:

http://arbiter.wipo.int/domains/decisions/html/2005/d2005-1116.html

 

[jberryhill]

if these scumbags do hammer your site continually from a limited number of ip's

"These scumbags" do quite a number of things. Apropos to George's posting immediately above, the scumbags in that case maintained a CNAME record in the DNS for one of their other domains, pointed it at the domain name in dispute, and then accused the respondent of hi-jacking traffic from their other domain.

It's a jungle out there.

 

[actnow]

... the scumbags in that case maintained a CNAME record in the DNS for one of their other domains, pointed it at the domain name in dispute, and then accused the respondent of hi-jacking traffic from their other domain.

How would I know this if my domain (in dispute) was pointed towards a PPC company?